Nullity of trademark registration
Estudio Colmenares provides the service of initiating the administrative action of nullity of registration of a trademark before the Trade Mark Office that granted the corresponding certificate, when it is included within any of the reasons of law (Article 172 of Decision 486). If the trademark had been granted in contravention of any rights of thirds or if it had been granted in bad faith, it is possible to initiate the relative nullity of the registration of said trademark. In this case the action prescribes within five years counted from the granting date of the registration, the nullity of which is requested.
It is also possible to initiate, at any time, the absolute nullity of the registration of a trademark that was granted under an absolute impediment. This action does not prescribe.
In this case, the plaintiff must submit proofs evidencing that the registered trademark was granted by incurring in certain of the presumptions of nullity. Then the holder has a term of two months to reply the nullity action. Then, the Trade Mark Office will evaluate the proofs and if they evidence the presumptions of the action, it will declare the nullity of the certificate the effect of which is the non-existence thereof.
On the other hand, it is also offered the service of defense of the trademark holders when they have been notified with an absolute or relative nullity action of a trademark registration by a third party or ex officio.
The First Instance issues a resolution in about eight months and if this is appealed before the Second Instance it will last about between 10 and 13 months. The Administrative Authority has a maximum term of 180 working days to issue a resolution (Article 128 of Legislative Decree N° 1075).