February, 2003

NON - USE TRADEMARK CANCELLATION ACTION - INTERNATIONAL CONCEPT OF USE
Trademark Law No. 1294/98 sets forth the mandatory use of a trademark.

Starting October 1 - 2003, it will be possible to file non-use trademark cancellation actions.

The above mentioned law establishes that a trademark is in use as long as the goods or services as covered thereby have been placed into commerce or have been available in the market with such denomination. Furthermore, the trademark use must be in such a quantity and manner which corresponds to the nature of the goods and services, the types of commercialization thereof, and taking into account the size of the market.

The use of a registered trademark must be done as it appears in the registration certificate, but if in the use there are differences in details or secondary elements thereon, the latter shall not be sufficient cause for a trademark cancellation action.

Publicity and the introduction of goods and services are deemed as trademark use, only if the latter is effectively carried out within the next four months of the beginning of the advertising campaign.

The non-use trademark cancellation action must be filed before the civil and commercial jurisdiction, and it follows the proceeding of an ordinary civil law action.

The claimant who obtains a favorable trademark cancellation resolution shall have the priority right to file an application thereof within the next three months following the date in which the pertinent resolution has stated firm.

The trademark use burden of proof is on the trademark owner's side. In order to avoid a trademark cancellation, the owner must demonstrate that he has publicly and effectively used the trademark.

A trademark registration shall only be cancelled upon the petition of an interested party in the following circumstances:

1. when use thereof has not taken place immediately within the next five years of the title granting;

2. when use thereof has been interrupted for more than five consecutive years; and,

3. when use thereof within the previously mentioned term period has taken place with substantial alterations of its original distinctive character as contained in the pertinent trademark certificate.

A trademark cancellation action is not applicable:

1. if the trademark owner is able to prove the impossibility of use by a judicial resolution from which no further recourses may be filed in a previous proceeding within the above-mentioned term period of five years;

2. when non-use may be justified due to force majeure
   The use carried out in relation to one or some of the goods or services as included in one class implies the justification of use for all goods or services in that particular class and in all other remaining classes.

A registered trademark - but not in use in one class - shall not be cancelled provided that the trademark has been used in the commercialization of goods or in the rendering of services as covered by other registration(s) in other classes.

VERY IMPORTANT: Like Panama, Paraguay has adopted the international concept of trademark use. This means that the use of a trademark in any country in the world is enough to impede a trademark cancellation action in Paraguay.
Should you require further information please do not hesitate to contact us at any time.

Cordially,

ZACARIAS & FERNÁNDEZ
Asunción - PARAGUAY

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