Web searches are insufficient to justify trademark use

In the case “Alegre, Gustavo Martín v. Descartables del Sur SRL” (Case No. 15.298/2024), Division I of the Federal Court of Appeals in Civil and Commercial Matters overturned the Trademark Office’s decision that had granted the partial non-use cancellation of the defendant’s trademarks.

Alegre had requested the cancellation of the trademarks EFFECTIVE CARE, AFFECTIVE, AFFECTIVE CLASSIC, AFFECTIVE ADVANCED, and AFFECTIVE ACTIVE, owned by Descartables del Sur, based on non-use. Descartables del Sur did not respond to the cancellation request nor appeared at any stage of the administrative proceedings.

The TMO, after conducting an online search and geolocating the use of one of the defendant’s trademarks, declared the partial cancellation of Descartables del Sur’s trademarks. Although the TMO was unable to determine the business origin of the commercial activity identified, it based its decision on the principle that, in cases of doubt regarding the use or non-use of a trademark, it is appropriate to declare partial cancellation rather than a total cancellation.

Alegre appealed the TMO’s decision before the Federal Court of Appeals, which analyzed the case and determined that the TMO’s reasoning and online search were insufficient to justify use of the trademarks in question. The court emphasized that trademark use is not limited to merely placing the mark on products or services, but must involve a concrete commercial activity, which must be continuous and uninterrupted.

Furthermore, the appellate court held that, in non-use cancellation proceedings, the burden of proof lies primarily with the trademark owner, who is in a better position to demonstrate effective use. The plaintiff, in turn, cannot be required—except to a reasonable extent—to prove a negative fact, such as the non-use of the mark.

Consequently, the court considered the defendant’s silence throughout the proceedings to be decisive and concluded that, in the absence of evidence of use, a partial cancellation based on unproven assumptions or presumptions could not be upheld.

Based on these grounds, the court overturned the TMO’s decision and declared the total cancellation of Descartables del Sur’s trademarks based on non-use.