Same evidence, different results: Precedents of Mandatory Compliance regarding the joint use of trademarks and the burden of proof

Published byErnesto Barzola

As regards trademarks, the exclusive use entails in contrast an obligation of use to keep the validity of said rights, this results in the trademark registration’s need to provide evidence of the reality of the market. In this sense, trademark regulations have foreseen a mechanism to prevent the accumulation of trademark registrations that do not comply with the stated obligation of use, this mechanism is the non-use cancellation, by which, at the request of the legitimately interested third party, the trademark owner must demonstrate the use of its trademark within the three years preceding the beginning of the cancellation proceeding.


Now then, even though the concept of non-use cancellation is a simple proceeding and merely based on evidence, it is just its evidential character which give rise to complex situations that must be clarified by the Administrative Authority based on an analysis that corresponds to the concrete case and, in turn, can guide cases of similar characteristics.


Among those complex situations, we found the cases in which the Authority must determine if the submitted evidence allows appreciating the use of a single derivative trademark or if it is a case of joint use of trademarks and the evidence material allows demonstrating the use of more than one trademark.


These situations haven been specified by the Intellectual Property Specialized Division in two Precedents of Mandatory Compliance contained in Resolutions 410-2020/TPI-INDECOPI and 994-2020/TPI-INDECOPI.


In the first precedent, the Division determined the following regarding the valuation of the means of proof in cases in which the use of derivative trademarks is evaluated:


“(…) unless it concerns the simultaneous or joint use of trademarks, it is not possible that with a same means of evidence the use of two or more derivative trademarks be proved, since they are different trademarks, although they share a common distinctive element.


In cases in which this situation occurs, given that it is possible that the same evidence is presented in various case files, the Authority will have to determine to which of the trademarks object of cancellation correspond the means of proof presented, having to verify for such purpose which of the used signs is identical or substantially similar to the sign which use is sought to be demonstrated.


Upon the Authority’s determination, the analyzed means of proof to demonstrate the use of a trademark cannot be considered in the cancellation proceedings of the other trademarks.”


Moreover, the following was established in the second precedent:


“(…) it is possible that a same means of proof can demonstrate the use of two or more trademarks in different cancellation actions, when it is verified that it is the case of simultaneous or joint use of trademarks.”


Although from a first reading of the cited precedents, it seems that the arguments are reiterative, said precedents actually complement each other perfectly.


In fact, the first precedent concludes that in the case that the same evidence is presented to demonstrate the use of several derivative trademarks, it will correspond the Authority to specify which pieces of said evidence will be considered and for which proceedings.


Thus, the partial reading based on this only precedent would lead us to conclude that in the case of cancellation proceedings of several derivative trademarks, the evidence presented would only be useful to demonstrate one of the marks which cancellation is sought.


Notwithstanding the above, the second precedent remarks (although the first precedent mentions it) that it is possible to use the same means of proof to demonstrate the use of two or more trademarks in the case of simultaneous or joint use.


As to this last precedent, it is important to analyze the case in which said decision was taken.


The Precedent of Mandatory Compliance issued in Resolution No. 994-2020/TPI-INDECOPI corresponds to the non-use cancellation proceeding of trademark    (Certificate No. 169617) in class 9. In said proceeding the Division determined, upon examining the means of proof, that it was the case of a simultaneous use of trademarks in which at the same time were used trademarks AIWA (Certificate No. 208599) and (Certificate No. 169617), both distinguishing products in class 09. In that sense, the Division concluded that although the submitted evidence had been previously used to demonstrate the use of trademark AIWA (Certificate No. 208599), having been verified the joint use of this trademark and trademark (Certificate No. 169617), it was properly to admit said evidence for the non-use cancellation proceeding of the latter.


Briefly, it is noticed that the Division concluded that, in the case of non-use cancellation proceedings against two or more derivative trademarks, the following shall be made:


1.    Firstly, from the examination of the evidence, it shall be established whether it is a simultaneous or joint use of derivative trademarks.

2.    Secondly, to verify which of the referred derivative trademarks are used, which will depend on the admitted evidence.

3.  Finally, to determine which pieces of evidence allows appreciating the use of each one of the derivative trademarks and to assess if said demonstrated use is according to Article 166 of Decision 486.


It is worth mentioning that the precedents do not specify if the simultaneous or joint use of the derivative trademarks can be noticed in different pieces of proof or must be jointly present in all of them; that is, if in the case of non-use cancellations of two or more derivative trademarks, in order to demonstrate their use, the use of the trademarks shall be noticed in the same means of proof or if it is possible to demonstrate it in a use simultaneous in time but in different documents.


In this regard, we believe that in the above case, it must be followed the criterion stated by the Division in both precedents, which results from what Carlos Fernández-Nóvoa has set out, which establishes that relevant use must be assessed, and it must be differentiated from the apparent use:


“-   A relevant use will occur when in the commercial policy of the corresponding sector or of the owner of the trademarks itself, it is common to provide the product with more than one trademark.

-   An apparent use will occur when two or more trademarks are used to commercialize the same product. In this case, it must be determined which of the trademarks works as identifier of the corporate origin of the product. Another case occurs when several trademarks are used for a product, but in the advertisement and trade documents only one trademark is used, which will be considered the legally used trademark” (citation from Resolution No. 994-2020/TPI-INDECOPI)."


In that sense, if the evidence material allows appreciating a relevant use in two or more derivative trademarks, regardless of their presence in all or any of the pieces of proof, it will the case of a valid use for said derivative trademarks; on the contrary, if the evidence material only allows appreciating the relevant use in one or more derivative trademarks and an apparent use in all the rest of the derivative trademarks, only the use of the first ones will be demonstrated, since they are the ones allowing consumers to identify the corporate origin of the products and/or services at their disposal.


In conclusion, the analyzed precedents allow delimiting the evidence quality of the documents offered by the owners of two or more derivative trademarks which non-use cancellations have been requested, and at the same time reinforcing the essential purpose of the non-use cancellation proceedings, to allow registration to be reflection of the market reality.