Decision Nº 2688-2012/TPI-INDECOPI, issued by the Administrative Court, concerning Case Nº 433617-2010, has established as general rule that to assess the use of a registered trademark against which a cancellation action on the grounds of non-use has been filed, it must be carefully determined if the evidence filed by the trademark owner, particularly sales invoices, really demonstrates the use of said sign as trademark or, on the contrary, as trade name. In the latter case, said documents must be dismissed as evidence of use, and total cancellation of the mark at issue will be ordered.
We must remember that a trademarks is a distinctive mark (words, letters, numbers, photographs, inter alia) that is useful for consumers to differentiate between the products or services of an individual or company from those belonging to other individual or company, which are offered in the market. Trade name means the mark which identifies an individual or company in the course of its economic activity or which identifies a commercial establishment.
The abovementioned decision especially establishes that the presence of a certain denomination on the head of an invoice or at the top thereof, must be considered as the trade name of the company issuing such invoice, and the presence of said mark could not be deemed to be evidence of use of a trademark identifying a certain product or service in the market.
Furthermore, only if the owner of the trademark demonstrates, using other type of documents or evidence, that the mark appearing on the head or at the top of the owner’s invoices is actually used as trademark to identify products or services in the market, it must be acknowledged in such case that the mark at issue acts effectively as trademark, and its validity in connection with the products/services it distinguishes must be declared.
We reproduce below part of said Decision Nº 2688-2012/PI-INDECOPI, issued in connection with case Nº433617-2010, which ordered the total cancellation of trademark DELAC and design, registration certificate Nº 109580, which use was not demonstrated in said proceeding:
“Moreover, the registered trademark must be used in connection with the products it distinguishes and not as trade name (namely, on the head of the invoice or at the top thereof), since the latter would only prove the effective use of a mark to identify a company in the course of its economic activities, but would not prove the use of a mark to identify a certain product in the market”.
Consequently, the aforementioned criterion should be applied in all similar cases, in which the owner tries to demonstrate the use of the trademark by presenting invoices on which the objected trademark appears represented as trade name.