THE IMPORTANCE OF ACTIVE USE OF TRADEMARK RIGHTS

"Trademarks", which can be defined as personal names, shapes, letters, numbers, etc. or signs that can be expressed in a similar manner, provide an "exclusive (monopolistic) right" to trademark owners, as they can be registered together with the goods or packaging by enabling the goods and services of one undertaking to be distinguished from the goods and services of another undertaking.

While the "right" in question and the "authority to dispose of the trademark in any way (withdrawal, transfer, licensing, etc.)" belong to the trademark owner, there are certain points that must be taken into consideration to ensure that this right is not lost. The most important of these is the requirement to "renew the trademark registration" after the protection right (generally 10 years) expires, and, more importantly, the requirement to "actively use the trademark."

While a trademark right acquired through registration is only valid during the registration period, the term of the trademark right can be extended by renewing the trademark registration within the legally specified periods (six months before and six months after the registration expires) at the end of the protection period. However, failure to renew the trademark registration terminates the existing trademark right.

Another way to terminate trademark rights is through the cancellation of a trademark registration. This cancellation can occur either through a withdrawal request by the trademark owner or through a third party initiating a cancellation lawsuit against the trademark registration within the legally prescribed timeframe. Cancellation lawsuits can be filed for various reasons, such as unfair competition, bad faith, and so on. However, one of the most common cancellations is the non-use lawsuit.

While the timeframes for filing a "non-use cancellation lawsuit" against a trademark vary within the specific legal frameworks of nearly every country worldwide, a cancellation lawsuit can generally be filed against a trademark on the grounds that it has not been actively used within a "three-year" or "five-year" period. These lawsuits challenge the use of the trademark. If the trademark owner cannot prove active use within the specified timeframe, the trademark registration is canceled and the trademark right terminates.

Various countries around the world follow different procedures regarding active trademark use, and nearly every country has its own unique procedures and principles. For example, the US requires declarations of use before and after registration, while countries like the Philippines, Mexico, and Cambodia require proof of use within legally mandated timeframes.

In conclusion, we must remember that registering a trademark at home or abroad is not sufficient on its own for effective protection, and that the registered trademark must be actively used in relation to legal obligations or lawsuits that may be filed by third parties.

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