On December 28, 2022, the BPTO has published the Technical Note No. 03 of 2022, which updates the procedure for the non-use cancellation action.

Non-use is the possibility to claim for the declaration of extinction of a trademark in case its use has not started after 5 (five) years from the date of its concession or in case of using the mark in a different way as it was granted (or i.e. with any substantial alteration from what was originally registered and/or commercializing products or services of which they were not registered for). In addition, expiry may be declared if the use of the trademark has been interrupted for more than 5 (five) consecutive years.

Therefore, we highlight below the main updates in this procedure:

  1. The registration holder is not obligated to provide proof of use for the first 5 (five) years from the concession date;
  2. Use in the private sphere, or just the internal use of the trademark, will not be considered capable of ruling out the non-use cancellation, given that preparation for use (development of labels, packaging, creation of visual identity) characterizes internal use;
  3. It is considered public use of the trademark the one made in intermediary transactions that take the product or service to consumers (distribution);
  4. The trademark does not need to reach the final consumer;
  5. There is no determination for a minimum amount of use of the trademark, however the number of supporting documents must be consistent with the characteristics of the product or service in the respective market;
  6. In the case of a trademark in co-ownership, the proof of use of the trademark presented by at least one of the co-owners rules out the cancellation for them all;
  7. To be accepted as evidence of effective use of the trademark, the evidence must be issued by the registration holder or licensee, upon proof of licensing or use authorization; having data within the investigation period; make reference to the trademark exactly as granted or with minor changes that do not modify its original distinctive character; and demonstrate the trademark granted by marking the products or services identified in the registration certificate;
  8. The BPTO will consider as legitimate reasons to justify the lack of use and not declare the expiry in cases of majeure force and circumstances beyond the control of the holder, unpredictable and uncontrollable, such as the inputs import suspension by government decision, the existence of a Judicial Action for Nullity of Registration or Administrative Nullity Proceedings.

Therefore, in addition to extending the registration, the owner of a trademark has the duty to: (a) use the trademark as granted, either in its graphic and visual aspect, or in relation to the products or services in the classes in which they are registered; (b) start using the trademark compulsorily from 5 (five) years from the date of its grant; and, (c) not to interrupt the use of the trademark for more than 5 (five) years.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.