Título II Capítulo IV. Extincion del Registro de la marca

The registration of a trademark is extinguished: Upon expiry of the time limit, if its renewal has not been timely requested; Upon cancellation at the request of the holder; Upon cancellation due to genericization of the trademark; For lack of use of the trademark; and By final enforceable judgment of a competent court.

The lapse due to expiry of the time limit of a registration operates by operation of law and may be declared on its own initiative or at the request of a party. The timely filing of the application for renewal of a registration shall not give rise to the lapse thereof, unless the application does not comply with what this law requires for such purpose.

The holder of a trademark may at any time request the cancellation of that registration or the restriction as to the products or services it covers. The request for cancellation shall contain a signature legalized by a notary and be accompanied by proof of payment of the corresponding fee.

At the request of any interested person, the competent judicial authority may order the cancellation of the registration of a mark or limit its scope where its holder has caused or tolerated it becoming the generic name of one or more of the goods or services for which it was registered.

It shall be understood that a mark has become a generic name when in commercial circles and for the public said mark has lost its distinctive character as an indication of the business origin of the product or service to which it applies. For these purposes, the following facts must concur with respect to that mark:

a)The need for competitors to use the sign in view of the absence of another suitable name to designate or identify in commerce the product or service to which the mark applies;

b)The widespread use of the mark by the public and in commercial circles as the common or generic name of the respective product or service; and

c)The lack of recognition of the mark by the public as a distinctive sign of a specific business origin.

At the request of any interested person and after a prior hearing of the holder of the registration of the mark, the competent judicial authority shall cancel the registration of a mark where it has not been used during the five years preceding the date on which the cancellation action is brought. The request for cancellation shall not proceed before five years have elapsed counted from the date of the registration of the mark. Cancellation of a registration for lack of use may also be requested as a defense against an objection by the Registry, an opposition by a third party to the registration of the mark, a request for a declaration of nullity of a registration or an action for infringement of a registered mark. In these cases the cancellation shall be decided by the competent judicial authority.

Where use of a mark is commenced after five years have elapsed from the date of grant of the respective registration, such use shall prevent cancellation of the registration only if such use was commenced at least three months before the date on which cancellation was requested.

Where lack of use affects only one or some of the products or services for which the mark was registered, cancellation of the registration shall result in a reduction or limitation of the list of the respective products or services, eliminating those in respect of which the mark has not been used.

A registered mark shall be deemed to be in use where the products or services which it distinguishes have been placed on the market or are available in the quantity and in the manner that normally corresponds, taking into account the size of the market, the nature of the products or services in question and the modalities under which their commercialization is carried out. Use of the mark shall also be constituted by its employment in relation to products intended for export from the national territory, or in relation to services provided abroad from the national territory.

A registered mark shall be used in commerce as it appears in its registration; however, use of the mark in a form differing from the form in which it appears as registered only with respect to details or elements that are not essential and that do not alter the identity of the mark shall not be grounds for cancellation of the registration nor diminish the protection conferred thereby. Use of a mark by a licensee or by another person authorized therefor shall be deemed to have been effected by the holder of the registration, for purposes relating to use of the mark.

The registration of a mark shall not be cancelled for lack of use where the lack of use is due to justified reasons. Circumstances arising independently of the will of the holder of the mark and constituting an obstacle to its use shall be recognized as such, such as restrictions on importation or other official requirements imposed on the products or services protected by the mark.

The burden of proof of use of the mark shall lie with the holder of the mark. Use of the mark shall be established by any admissible means of evidence demonstrating that the mark has effectively been used.

The action for a declaration of nullity or voidability of a registration may be brought if the same was obtained in contravention of the provisions of Articles 20 and 21 of this Law, respectively.

If the registration was obtained in contravention of the provisions of Article 20, or if the registration was obtained in bad faith, it shall be affected by absolute nullity and consequently shall be revocable at any time. In this case the nullity action shall be brought before a judge of first instance of the civil branch, by the Office of the Attorney General of the Nation when it affects interests of the State or by any person who considers themselves affected.

If the claim is based on violation of the provisions of Article 21, the registration shall be voidable. The respective action may only be brought by the injured party or by the party affected in the matter. That opposition was filed against the registration is no obstacle to the exercise of such action, unless the case has been decided by the Tribunal of Administrative Litigation.

The nullity of the registration of a mark shall not be declared on grounds that have ceased to be applicable at the time the nullity is decided.

When the grounds for nullity exist only with respect to one or some of the goods or services for which the mark was registered, nullity shall be declared only for those goods or services, and they shall be removed from the respective list in the registration of the mark.

For purposes of this Article, bad faith shall be presumed in the following cases:

a)If the registration was obtained on the basis of false or inaccurate data provided by the applicant;

b)If the applicant is or was an agent, representative, client, user or distributor, or has or had any other relationship with the person who in another country has registered, or has previously applied for registration of, the sign in question, or another similar and confusing sign, except with authorization from the legitimate holder;

c)If the sign affects a well-known mark or other well-known sign, as provided in subparagraph c) of Article 21 of this Law; and

d)If the applicant, by reason of his activity, knew or should have known of the existence of another's mark.

The nullity or voidability of a collective or certification mark registration shall be declared with respect to all of the goods or services it covers; and, in addition, grounds for seeking its nullity shall include that the regulation governing use of the mark in question is contrary to the provisions of this Law, to morals or to public order; that the mark was registered without complying with the requirements relating to the regulation governing use or when its use contravenes applicable legal or regulatory provisions or in such a manner as to distort its function.