Cancellation of well known trademarks due to lack of use

The increasing tendency of parties filing cancellation actions for lack of use against well known trademarks, signals the need for trademark authorities to further interpret principles of trademark law, with regards to protection of well known marks and the conflict with legal requirements in cancellation actions for lack of use, which lead to a pointless cancellation of defensive well known trademarks.

Article 220 of Ecuador’s Intellectual Property Law, in conformity with the provisions of Article 165 of Andean Decision 486, establishes that marks can be cancelled if, with no justified reason, they have not been used by their holder or licensee in at least one Andean Community member country during three years prior to commencing the action. The provisions of the Intellectual Property Law extend the spectrum of use even to other countries with which Ecuador has treaties in force on this matter.

This topic is important when such actions are brought against well known trademarks whose registration could be extended to several international classes as defensive marks. Demonstrating the use of defensive marks might not be feasible and would lead to a pointless cancellation of well known trademarks if the law was strictly applied. Those actions contravene the special principle of protection of well known trademarks as well as the essential purpose of a cancellation action due to lack of use. On the one hand, it would harm the holder of a well known mark who, even without registration, would be able to uphold the extension of its protection and, on the other hand, the cancellation action for lack of use would be denatured because the claimant - by obtaining the cancellation - would be deprived of his preferential right, since the trademark would still not be apt for registration.