On July 16, a Webinar on "Cancellation of trademark registrations due to lack of use: comparative analysis" was held by the Trademark Committee-, moderated by Luis Baz Baz (partner of the Firm Elzaburu, SLP).
During the Webinar, the most relevant particularities of the path of cancellation of trademarks due to lack of use as an instrument to eradicate from the registry those signs that are not being used and that, however, can constitute a serious obstacle to access to the registry of new trademarks, were analyzed.
Speakers Clarissa Jaegger (partner of Montaury Pimenta Machado & Vieira de Mello), Miguel Muñoz (founder of the Firm Muñoz & López) and Liza Erazo (founder of the Firm Erazo Abogados) analyzed, from four well differentiated blocks of questions, the most relevant particularities and tips of practical nature in Brazil, the United States and the Andean Pact. In the first block, they resolved general questions related to the bodies before which the claims are filed, whether there is accumulation of claims and counterclaim, the duration of this type of procedure and its costs. In the second block they referred to the standing and burden of proof, as well as the relevant period to be considered. In a third block, they fully entered into what is understood by effective use and what means of proof should be articulated. Before moving on to the round of questions, the speakers concluded their interventions with a fourth block in which they alluded to the possibility of justifying the lack of use to enervate the action, as well as the resources and costs regime.
The Webinar was very agile and revealed that the US system is quite different from the Andean Pact and Brazil systems. In fact, in the United States, the burden of proof of the abandonment of the trademark corresponds to the petitioner of the cancellation, while in the other jurisdictions analyzed - as occurs in the EU system - the burden of proof of the use of the trademark falls on the defendant.
You can access the recording here.
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