Cancellation actions based on non-use constitute one of the cornerstones of trademark law, as they seek to prevent the undue monopolization of signs and ensure that trademarks effectively fulfill their distinctive function in the marketplace. Under Andean Decision 486, a trademark registration may be cancelled when the trademark has not been used in a real, effective, and continuous manner during the three consecutive years preceding the filing of the non-use cancellation action.
However, this rule is subject to an important exception in the case of well-known trademarks.
Resolution No. 2162-2025/TPI-INDECOPI, issued by the Peruvian Trademark Office (“PTO”) at second instance, developed a particularly relevant criterion in connection with the non-use cancellation proceeding filed against “EL REY” trademark registration in Class 30, as the trademark owner argued that the trademark enjoyed well-known status.
At first instance, the PTO held that the proven notoriety of the trademark extended only to “condiments” and was therefore insufficient to preserve protection for all the goods covered by the registration in Class 30. As a result, the authority partially cancelled the registration, limiting its scope to “sauces (condiments); spices,” which were the goods for which both use and notoriety had been demonstrated.
Nevertheless, at second instance, the PTO reversed this approach and concluded that a well-known trademark cannot be cancelled for non-use.
In support of its decision, the PTO relied on Article 229(b) of Andean Decision 486, which provides that a sign shall not be denied well-known status solely because it has not been used in a Member Country of the Andean Community.
The PTO also referred to several decisions issued by the Court of Justice of the Andean Community, according to which well-known trademarks constitute an exception to the principle of real and effective use.
One of the most significant aspects of the decision is that the PTO did not limit such protection solely to the goods for which notoriety had been demonstrated. On the contrary, it held that once the notoriety of a trademark has been recognized, the enhanced protection afforded to well-known trademarks extends to the entire registration challenged in the non-use cancellation action, including those goods for which neither use nor specific notoriety had been proven.
The PTO further held that cancelling a well-known trademark would be inconsistent with the enhanced protection afforded to this category of signs, since even if a third party succeeded in obtaining cancellation of the registration, it would still be unable to subsequently register an identical or similar sign due to the likelihood of confusion or dilution arising from the previously recognized notoriety of the trademark.
In this context, the criterion adopted by the PTO is particularly relevant, as it concludes that a well-known trademark cannot be cancelled for non-use. Such interpretation reinforces the exceptional protection afforded to this category of distinctive signs and reaffirms that, under certain circumstances, notoriety may prevail over the requirement of real, effective, and continuous use for the maintenance of a trademark registration.
