As part of a cancellation proceeding, is it possible to keep products or services used in the market that are not specifically detailed in the scope of products or services distinguished by the trademark but are under a genre?

alejandro-castro

 

Alejandro Castro Angulo

Lawyer – General Representative

 

 

 

 

 

 

Abstract

By Resolution N° 2076-2016/TPI-INDECOPI the Intellectual Property Administrative Chamber (hereinafter, the Chamber) issues a new precedent of mandatory compliance about Trademark Parcial Cancellation. Now, the prove of use of products or services that are not specifically detailed in the trademark registration but belong to a genre must have a similarity with other products or services of the later in order to keep the original genre scope. Otherwise, the authority will reduce or limit the products or services distinguished with the trademark only to those whose use has been proved. 

By Resolution N° 2076-2016/TPI-INDECOPI the Chamber issued a new precedent of mandatory compliance which modifies the meaning of the previous precedent of Trademark Parcial Cancellation (Resolution N° 1183-2005/TPI-INDECOPI) regarding the criterion when determining whether to keep the genre of products or services in force in the registration of the trademark in accordance with the provisions of the third parragraph of article 165 of Decision 486.

Katty Giovana Ñahui Fierro requested a petition of cancellation action based on non use of the trademark CORONA which distinguishes exclusively hand tools in class 8. Katty Ñahui stated that evidence showed that CORONA was used – in small quantities- only to distinguish butcher´s knife and not all the products under hand tools in class 8 as the trademark registration indicated.

First instance stated that CORONA was used in a reasonable way and it distinguished butcher´s knife, which is under hand tools in class 8. Therefore, the trademark was actually being used accordingly and the action of cancellation was declared unfounded.

Katty Giovana Ñahui appealed the decision pointed out that evidence showed that CORONA was only used to distinguish butcher´s knife and as consequence the cancellation should be parcial. In that regard, the registration should only cover butcher´s knife and not hand tools since it is to general.

In that regard, third parragraph of article 165 of Decision 486 states:

“Where the non-use of a mark affects only one or some of the goods or services for which the mark was registered, a reduction or limitation of the list of goods or services included in the registration shall be ordered, at which time those in respect of which the mark has not been used shall be eliminated; to that end due regard shall be had to the identicalness or similarity of the goods or services.”

As previously mentioned, under Resolution No. 1183-2005/TPI-INDECOPI the Intellectual Property Chamber regulated the application of the third parragraph of article 165:

  • The Authority will order the reduction or limitation of the list of products or services whose use have not been proven, so the rule does not establish a power but imposes an obligation: that of partially canceling the registration of a trademark with respect to those products or services whose use have not been proven.
  • The rule states – referring to the aforementioned reduction or limitation – that the Authority should take into account the “identity or likeness” of the products or services.
  • The identity or similarity should be evaluated in relation to the products or services whose use have been proven. In order to maintain a product or service in the registration of the trademark, the Authority must determine:
    • If the use of the trademark is proved for a product or service identical to one specifically listed in the list of products or services of the trademark; or
    • If the use of the trademark is proved for a product or service that is not specifically detailed in the list of products or services which distinguishes. In this case, the Authority will verify in particular:
      • If such product or service is similar to one specified in that list; or
      • If said product or service is included in a genre of products or services expressly distinguished by the trademark.

Finally, if only the use of the trademark is proven to distinguish a product or service that is not included in any of the a) and b) assumptions described above, the Authority will cancel the registration, as it happens when no evidence proves the use of the trademark.

One of the criteria set out in the abovementioned resolution was to maintain in force the type of goods or services included in the registration of a trademark, provided that the use of such trademark was proven to identify at least one product or service that even though it was not specifically detailed in the list of products or services distinguished by that trademark, it did fall within the genre of products or services expressly identified in the registration.

Products or services that were part of the same genre were considered to have similarities among them. However, according to the Chamber experience there is no similarity between products or services belonging to the same gender.

 

 

 

 

 

 

 

 

 

 

 

 

Trademark “X”

Distinguishes Proves the use for: Cancells the registration for: Remains in force for:
{a,b,c,d,e,f,g} {a,b,c,d} {e,f,g} {a,b,c,d}
{a,b,c,d & others} {c} {a,b,d & others } {c}
{a,b,c,d & others} {a,b,c,d} {& others} {a,b,c,d}
{a,b,c,d & others} {k} [k is not specifically detailed on the list but belongs to “& others”] {a,b,c,d & others} {k}
{a,b,c,d,e,f,g} {b+} [b+ is not specifically detailed on the list but belongs to b, however it is not similar with all the products under b] {a,b,c,d,e,f,g} {b+}
{a,b,c,d,e,f,g} {b+} [b+ is not specifically detailed on the list but belongs to b, also it is similar with all the products under b] {a,c,d,e,f,g} {b}
{a,b,c,d,e,f,g} {m} [m is not specifically detailed on the list nor belongs or is similar to a,b,c,d,e,f,g] {a,b,c,d,e,f,g} {Ø}

This chart (specifically the bold part) modifies the criteria about similar products:

 

 

 

 

Trademark “X”

Distinguishes Proves the use for: Cancells the registration for: Remains in force for:
{a,b,c,d,e,f,g} {b+} [b+ is not specifically detailed on the list but belongs or is similar to b] {a,b,c,d,e,f,g} {b}

Under the last precedent of mandatory compliance, for a product or service that was not specified on the list of products or services but it belonged to the genre or was similar to it, the genre was kept in the registration. However, the current position of the Chamber is to keep the genre in the registration of the trademark if the products or services not listed:

  • Belong to the genre and;
  • Are similar with the products or services that are under the scope of the genre

If in the procedure of cancellation the holder of the trademark cannot prove that the products or services, that belong to the genre, are similar to other products or services that also belong to the genre, the Administrative Authority will eliminate from the registration the genre and limit the products or services.

I believe that with this decision the Trademark Authority will have a more rigorous test. Before this rule, the reasoning skipped one step: that a similarity with the gener is not enough to actually know if the product or service was in fact similar. This opened a way to include new products o services in the scope of protection of the trademark that were not listed in the registration.

In the particular case of CORONA, butcher´s knife was not similar with other products of hand tools (genre). Therefore the Chamber decided to eliminate the genre and limited the products to just butcher´s knife.