/ Effective Use of Trademarks in Latin America: Regulatory Evolution and Current Challenges

With the dynamism of trade, the evolution of consumer habits, and the impact of new technologies, the effective use of trademarks has become a strategic requirement. Documenting their use, applying them in accordance with registration, and strengthening their presence through distinctive elements not only guarantees their permanence in the market but also consolidates their value as a competitive asset in an increasingly regulated and demanding environment.

 Laura Hernández Bethermyt

Senior Associate

In the Latin American commercial ecosystem, trademarks have ceased to be mere distinctive signs and have become strategic assets, whose validity increasingly depends on effective use in commerce. The regional trend points toward a regulatory consolidation that requires proof of actual use of trademarks as a condition for maintaining registration, discouraging the speculative accumulation of trademark rights.

Traditionally, in many countries in the region, it was not mandatory to demonstrate the use of a registered trademark. However, in recent years, several jurisdictions have incorporated mechanisms allowing for the cancellation of registrations due to lack of use, promoting greater transparency and dynamism within the system.

The Basis for Mandatory Use and Non-Use Cancellation

Non-use cancellation is a cause of extinction of trademark rights, established by law depending on each jurisdiction. Although legislations vary in their requirements and procedures, the underlying principle is the same: a trademark owner cannot indefinitely retain rights over a sign that is not being used.

In Latin America, implementation of this figure falls into two main models:

1. Declarative or upon request systems: Cancellation can only be declared if a third party with legitimate interest initiates legal action. The burden of proof lies with the trademark owner.
2. Mandatory declaration or ex officio systems: The law requires the owner to submit a declaration of use to the competent authority within a specific period. Failure to submit such declaration may lead to the automatic cancellation of the registration.

Latin American Jurisdictions

Mexico: Under the Federal Law for the Protection of Industrial Property (LFPPI)[1], trademark use must be declared in the third year after registration and subsequently at each renewal. This declaration is mandatory, and failure to submit it constitutes grounds for cancellation by operation of law. While proof of use is not required, a sworn declaration under oath of truth must be filed.

Argentina: Argentine law requires a sworn statement of use at “mid-term” (between the fifth and sixth year after registration) and upon each renewal. While failure to submit this statement does not result in automatic cancellation, it creates a legal presumption of non-use that third parties may use to initiate cancellation proceedings.

Chile: Law No. 19,039[2], in Article 24 quinquies, establishes that cancellation for non-use may be requested by an interested third party if the trademark has not been used for a period of five years. The Chilean system is request-based, with the burden of proof on the trademark owner.

Andean Community (CAN): Decision 486 of the CAN[3] provides that a trademark may be canceled at the request of an interested third party if it has not been used during the three years prior to the cancellation action. A distinctive feature of this regulation is that proven use in one member country is valid to prove use in the others, provided the trademark is registered.

Brazil: The Industrial Property Law No. 9,279[4] provides that cancellation for non-use may be requested by any person with legitimate interest. From the fifth year after registration, the trademark owner is required to prove use in Brazilian territory upon request by a third party.

Conclusion

The Latin American landscape requires trademark owners to adopt proactive portfolio management. The notion of perpetual registration through simple renewal is gradually fading. It is crucial to systematize documentation of use by continuously collecting admissible evidence (invoices, advertising materials, labels, catalogs, and other means that demonstrate real and effective use of the mark); evaluate registrations by periodically reviewing the portfolio to identify unused trademarks; as well as align registrations with commercial activity by ensuring that the classes and goods/services protected under each registration correspond to the actual use being made of the trademark.
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[1] Federal Law for the Protection of Industrial Property, https://www.gob.mx/impi/documentos/ley-federal-de-proteccion-a-la-propiedad-industrial-274304

[2] Law 19,039, https://www.bcn.cl/leychile/navegar?idNorma=30406

[3] Decision No. 486 of the Commission of the Andean Community establishing the Common Regime on Industrial Property, https://www.wipo.int/wipolex/es/legislation/details/18829

[4] Law No. 9,279 on rights and obligations with respect to industrial property, https://www.gov.br/inpi/es/servicios/patentes/legislacion