By Jazmin Alderete.
In the next two years, it will be 25 years since the current Trademark Law No. 1294/98 and its Regulatory Decree No. 22365/98 were enacted in Paraguay. Such Trademark Law brought a new obligation for trademark owners that did not exist in the previous Law of 1979, which is the mandatory use of the registered mark. The current Law specifically provides that if such use does not start within 5 years from the registration date, or is suspended for more than 5 consecutive years without good reason, the registration shall be liable to cancellation at the request of a third party. In turn, the Decree that regulates the Trademark Law introduced a particular and novel provision on the use requirement that differs from the ones of other countries of the region, such as Brazil or Argentina, and certainly promotes the registration of foreign marks in our country. What is the particularity of this provision and how has it benefited owners of Paraguayan TM registrations?
Decree No. 22365/98 provides that the use of a trademark in any country shall be sufficient to comply with the use requirement of our Trademark Law. This means that if a trademark is not in use in Paraguay, but being used elsewhere in the world, the TM owner may invoke this provision and the evidence of such use should be sufficient to avoid a cancellation action.
Another relevant point to mention on this topic is that in Paraguay the evidence of use is not a requirement to validate a registration process nor to apply for a renewal, file oppositions or other actions. In fact, there are no particular use requirements for a registration process whilst in some other countries, it is mandatory to demonstrate either the use or an intention to use.
Likewise, our administrative Authority is not allowed to act ex officio to cancel or remove a registration in case the registered trademark has not been in effective use within the required period, as in some other countries. In Paraguay, a trademark registration may only be challenged by a third-party request.
Last but not least, it is noteworthy to mention that if a trademark is registered in several classes, and the TM is not in use in one class, it shall not be liable for cancellation if it has been in use for products or services of other classes. Therefore, the concept of partial cancellation does not apply in our jurisdiction.
Almost 25 years after the promulgation of the Law and its Regulatory Decree and with many constant global changes on IP matters in the middle, the mentioned provisions remain in effect and has benefited both Paraguayan and foreign owners in a country where the commercial flow is currently booming.