It is common that when you decide to proceed with the registration process of your trademark in El Salvador, you start with the execution of a prior search process that allows you to determine if the trademark you intend to register is available or if it is registered in favor of another owner.
Although it is not recommended, it is also common that the prior search process is omitted and that you proceed with the filing of the application for registration without first having executed the corresponding investigation that will help you to determine if the trademark has real possibilities of success; reason for which, after the filing, the applicant may be faced with a resolution of prohibition or inadmissibility that does not allow the continuation of the process.
The reasons for the preliminary rejection of the application for registration are based on the fact that the intended trademark may affect the rights of third parties that already have a similar or identical trademark registered and in force, covering products or services also similar or identical to the ones you intend; therefore, the prospect of success of the new application may be substantially lower.
Notwithstanding the foregoing, it is not always advisable to throw in the towel and let the registration process be abandoned; since there is a mechanism that may allow you to obtain your registration, even if there is a trademark that hinders the registration; therefore, in this article we will refer to the judicial cancellation process for lack of use.
The Law of Trademarks and Other Distinctive Signs of El Salvador provides in its article 41-A that at the request of any person with a proven legitimate interest may apply to the competent court for the cancellation of the registration of a trademark when it has not been used in commerce during the five years preceding the date of initiation of the cancellation action. This request for judicial cancellation will not proceed before five years have elapsed from the date of registration of the trademark; that is to say, it may be interpreted that the holder of a registered trademark enjoys a five-year grace period for the beginning of the use of its trademark, otherwise, any interested party – such as the one whose registration has been denied – may initiate an action for cancellation due to non-use.
It is important to take into account that the use of the trademark must be proved by the owner of the trademark, that is to say, that in this process there is a modification to the general rule of the burden of proof where “he who alleges, is the one obliged to prove it in a pertinent manner”, therefore, the burden of proof is inverted according to the dynamic burden of proof that assigns the burden of proof to the procedural party that is in better conditions to do so, in this particular case, to the owner of the trademark without use.
Regardless of the fact that the search report does not yield positive results that allow you to have a good chance of registration, or that you have obtained a prohibition or inadmissibility resolution due to registration history, this is not always a sufficient reason for you not to obtain the registration of your distinctive sign.
Although this judicial process is not immediate and may take approximately 12 to 15 months to be completed, it is an effective measure if your trademark registration process has been denied due to the existence of other similar or identical trademarks… therefore, with a little time and patience you will be able to obtain the registration of your distinctive sign that will allow you to operate commercially with more peace of mind and in compliance with the Law.
If this brief article has been of your interest or if any doubts have arisen, we recommend you to contact our firm CONSORTIUM LEGAL so that our specialists in Intellectual Property and Litigation can review your case and give you a specialized legal advice that will allow us to fulfill your commercial objectives.