Review of the article “Reflecting on the concept of trademark use as a requirement for the preservation of a registration”, published in the Industrial Property Supplement – elDial.com, October 10, 2023.
By Juan Carlos Ojam and Camila Sirianni
Firstly, the authors highlight the challenges faced by participants in the Intellectual Property (IP) world due to changes brought by the omnipresence of the Internet and social networks, leading to the distortion of national borders.
In this new context, the article addresses one of the main challenges in achieving effective protection of intangible assets: how to adapt and interpret norms regarding the use requirement for maintaining a trademark registration.
Concerning the importance of this requirement, the authors remind us that use in the Argentine Republic is a sine qua non requirement to repel a cancellation action for non-use against a registration. Therefore, they question whether this statement allows for nuances, depending on the type of trademark at hand, the characteristics of the target consumer, or the evidence that can be provided, among other factors.
The authors propose adapting the traditional concept of trademark use and expanding it beyond conservative logic, i.e., one that solely associates it with the commercialization of a product or the provision of a service in the local market.
In their opinion, it is appropriate to evolve and give relevance to the presence of a trademark not only in the market but also in the minds of consumers. This phenomenon can occur with a trademark that has not formally entered the country or with a trademark that, due to business decisions or the challenges of the market itself, has ceased to exist.
In line with this thinking, the authors distinguish between the place of provision and the place of use of the trademark, explaining that the latter can be configured by a geographical market broader than the territory in which services are provided.
To support their stance, they cite a foreign precedent resolved on July 13, 2022, by the 9th Board of Appeal of the General Court of the European Union (GCEU), which overturned the cancellation of the trademark THE STANDARD, among others. The Court explicitly distinguished between the place where the service was provided and the place of use of the trademark, setting aside the cancellation by considering effective use directed at the European Union, despite hotel services being provided in the United States.
The authors continue by citing clear examples of trademarks that are in the minds of consumers and deserve protection against potential cancellation requests due to non-use: zombie brands and followers of foreign brands.
They explain that zombie brands are those that, for economic reasons or business decisions, are withdrawn from the market but resist disappearing. Having acquired notoriety –or not necessarily so– they fall into disuse but yet remain in the memory of consumers.
Regarding followers or enthusiasts of foreign brands, they mention those who, even if a product or service is not available in their country, know, admire, and even fervently defend the fame and prestige of a brand and/or company. Concerning this phenomenon, they emphasize that the brands they follow can enter the minds of consumers even before their actual commercialization in the local market, challenging the traditional criterion of local use.
According to the authors’ opinion, denying virtuality to the mentioned phenomena would be misguided. Due to the positioning and place they have achieved –even if only in the consumer’s mind– or due to the fanaticism that some brands generate, they are deserving of protection, regardless of whether there is current use in a specific territory.
As a closing statement, the authors conclude that as long as traditional concepts remain as the only valid rule for determining whether there has been use for trademark purposes, we would be ignoring the nuances imposed by the current market.
We invite you to read the full article here.
For further information please contact jcojam@ojambf.com and csirianni@ojambf.com.
