Our associate Katherine González is publishing an article in the specialized media World Trademark Review in which she explains the new criterion of the SENADI (National Services for Intellectual Rights of Ecuador) regarding proving the use of a registered trademark through invoices.
The article begins by detailing some aspects of Decision 486 of the Andean Community, which establishes that a trademark may be canceled if it has not been used during the last three years by its owner or by an authorized third party or a licensee in any country of the Andean Community (Ecuador – Colombia – Peru – Bolivia), for the products or services for which it was granted.
González indicates that SENADI, when examining the evidence filed as a defense in this type of actions, usually had valued the invoices as evidence of use, provided that the final recipient was in one of the countries of the Andean Community, regardless of the country of origin of the invoice. However, this criterion has been modified.
Recently, SENADI has stated that additional evidence will be required to demonstrate that the goods have been commercialized in the Andean market. In this regard, SENADI will consider "if the protected products or services were actually available in the Andean market in the form and quantities that correspond to the nature of the goods or services."
González states that "the basis for this decision is that, although an invoice indicates that a good or service has been commercialized, it does not confirm that the goods have entered the Ecuadorian market. Therefore, any invoice issued in a country that is not part of the Andean Community must be accompanied by proof that the good entered the country and, in some cases, even that it is offered in the local market. "
Our associate also reminds us of the high levels of formalities of the documents required when filed as a defense in cancellation proceedings.
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