The lack of use of trademarks brings with it diverse consequences for the owner, even if they have the rights and protection of the same; which are acquired through the registration before the Intellectual Property office of the country where the protection is required, this includes the exclusive rights and protection against third parties.
It is considered lack of use of trademarks if the owner doesn’t use it between 3 or 5 consecutive years, and in order for the registration right to prevail it is necessary to have effective use of the trademark in commerce, either by the same owner or through a licensee. Making use of the trademark, this fulfills one of its main functions, which is to distinguish certain goods or services in a concrete market.
The trademark legislations impose to the trademark owner the obligation to use the distinctive sign, in order to ensure the continuity of its right and that it is not susceptible to third parties interested in submitting actions of cancellation of registration for lack of use, being the use the obligation that sticks to the concept of real and effective use in commerce; and that the trademark is in use when the products or services that they distinguish have been placed on the local market in the quantity and manner that normally corresponds according to their nature and the way in which they are commercialized or offered, in other words the consumers have to know about the existence of products or services identified with said trademark, not being sufficient the intention to use.
However, when trademarks, despite having already registered protection, have not been placed on the commerce during the three years following the date of the granting of the mark, these are subject to cancellation due to lack of use. Depending on the regulation of each country, this can be judicial or administrative actions, initiated by third parties or even ex officio by the competent authorities.
Since it is the owner’s obligation to use the trademark effectively, the burden of proof is due to him, who in case of force majeure, fortuitous circumstance or justifiable impediments, which he must also prove, will lose the protection acquired with the register of not having it in effective use.
The cancellation of a trademark has as effect the extinguishment of the exclusive rights of the owner and the registration granted, leaving it available for third parties to request their protection.
Senior Associate
García & Bodán
Nicaragua