Statute of Limitations and Cancellation for Non-Use of Trademarks

The plaintiff had requested that the defendant be enjoined from using trademark “FRAPPE” in class 42, as well as damages for the unauthorized use of that trademark on the basis of plaintiff’s registration of trademark “FRAPPE” in class 42. The defendant counterclaimed requesting the cancellation due to non-use of the plaintiff’s trademark “FRAPPE”. Both the District Court and the Court of Appeals rejected the complaint and ruled in favor of the defendant.

The Court of Appeals first analyzed whether the injunction and the claim for damages were statute barred. In this regard, the Court held that the term applicable to this case was that established in section 36 of the Trademarks Law, which sets a three-year term from the infringement or a one-year term as of the date when the owner became aware of the infringement, and dismissed the two-year term included in section 4037 of the Civil Code on non-contractual responsibility. The Court also stated that the term should be counted as of the last use of the trademark.

The Court considered that use of the plaintiff’s trademark “FRAPPE” was not enough to prevent the cancellation of the registration for non-use and confirmed that the owner of the trademark is the one who is in the best position to prove its use. In this particular case, the Court held that the evidence filed by the plaintiff did not reveal an actual use proving market presence so as to prevent the non-use cancellation.

The Court decision confirmed the application of the term provided for in section 36 of the Trademark Law in respect of claims regarding trademark injunction and damages due to unauthorized use of a trademark, and confirmed that in order to prevent the cancellation for non-use of a registration it is necessary to prove actual use of the mark with real presence in the marketplace.

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		Gustavo P. Giay
		María Alejandra Hoschoian