Articles

Precedent of mandatory compliance regarding cancellation for non-use of trademarks consisting of packaging or containers

Published byMariella Borda

As publicly known, sustained cancellation actions imply the loss of registration of those owners which do not use their trademarks under the conditions established in Chapter V of Title VI of Decision 486.

 

In this order of ideas, it is very important to remember that Article 166 of said rule allows demonstrating the use of a trademark despite not having been used exactly as it was registered, provided non-substantial aspects which do not alter the distinctive character of the trademark are included or excluded, so that consumers when visualizing the trademark will not notice any variation and will remain perceiving the trademark just as it was registered.

 

 

Now then, regarding the application of said Article 166 of Decision 486, the Court Specialized in Intellectual Property has issued a precedent of mandatory compliance through Resolution No. 1137-2020/TPI-INDECOPI of November 11, 2020, which establishes the following:

 

(…)

 

“In this regard, the third paragraph of Article 166 of Decision 486 establishes that “Use of a trademark in a form different from that in which it was registered only with respect to details or features that do not alter its distinctive character shall not constitute grounds for cancellation of the registration for non-use, or lessen the protection corresponding to the trademark.”

 

Taking into account the cited rule, in the cases in which the trademark object of cancellation consists of packaging or a container, the trademark owner shall provide the burden of the proof to demonstrate the use of the trademark as it was registered, that is, regarding all its sides, provided that the same contain elements that result relevant and which absence constitutes a substantial modification with respect to the structure of said trademark.

 

In the instant case, although the mark used by the defendant contains the denomination SUNNY GIRL on a ribbon over the figure of a heart, it is not possible to verify that it contains the design that is present on the back of the registered packaging, which is composed of the figure of a standing doll inside a box, in pink, yellow, orange, blue and fuchsia colors, which are relevant elements of the mentioned packaging, so said modification would result substantial with respect to the registered trademark, as noticed below: 

 

 

Registered trademark

Used Mark

 


 


 

 

Taking into account the abovementioned, the defendant has not been able to demonstrate the use of its trademark as it was registered.

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IV. RESOLUTION OF THE COURT

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Four. Establish that the instant Resolution constitutes Precedent of Mandatory Compliance with respect to the application of Article 166 of Decision 486 and to the criterion that must be taken into account when a cancellation action for non-use of a trademark consisting of packaging or a folded out container is filed, in the terms indicated below:

 

In cases in which the trademark object of cancellation consists of packaging or a folded out container, the trademark owner shall provide the burden of the proof to demonstrate the use of the trademark as it was registered, that is, regarding all its sides, provided the same contain elements that result relevant and which absence constitutes a substantial modification with respect to the structure of said trademark.” (Resolution No. 1137-2020/TPI-INDECOPI).

 

As it can be noticed, the Court has clearly established that the owner of a trademark consisting of packaging or a container shall prove the use of its trademark with respect to all the relevant elements that are present all over the packaging. 

 

Finally, given the compulsory character of the mentioned precedent, the fact that the Court has established the criteria for proving the use of trademarks consisting of packaging or containers, allows the owners to know which parameters must be met regarding the correct use of their trademarks, having to be very careful when introducing them in the market, in order to prevent a different use of the trademarks, which could lead to the consequent loss of their registrations.