Through Resolution No. 50352 dated July 17, 2018, the Superintendence of Industry and Commerce (the “Superintendence”) sought to determine whether the use of a trademark on the web would constitute irrefutable proof to avoid the cancellation of it in a specific territory. The analysis took place within the non-use cancellation process promoted by PBX HOLDING LLC against the registration of the trademark PB PACKARD BELL (& design) in class 9 on behalf of ACER INCORPORATED.

The argumentation of the Superintendence was based on Article 2 of the Joint Recommendation Concerning Provisions on the Protection of Marks, and Other Industrial Property Rights in Signs, on the Internet, enacted by the World Intellectual Property Organization (WIPO). In the opinion of the Office, the recommendation anticipates that the use of a trademark on Internet is not always considered to belong to a particular state or territory, even when said use may be accessible to nationals of the territory where the trademark is registered.

Below, the articles used by the Superintendence to support its analysis and decision:

Article (2) two: 

Use of a sign on the Internet shall constitute use in a Member State for the purposes of these provisions, only if the use has a commercial effect in that Member State as described in Article 3.

Article (3) three:

[Factors] In determining whether use of a sign on the Internet has a commercial effect in a Member State, the competent authority shall consider all relevant circumstances. Circumstances that may be relevant include, but are not limited to: 

1. Circumstances indicating that the user of the sign is doing, or has undertaken significant plans to do, business in the Member State in relation to goods or services which are identical or similar to those for which the sign is used on the Internet. 
2. The level and character of commercial activity of the user in relation to the Member State, including: (i) whether the user is actually serving customers located in the Member State or has entered into other commercially motivated relationships with persons located in the Member State; (ii) whether the user has stated, in conjunction with the use of the sign on the Internet, that he does not intend to deliver the goods or services offered to customers located in the Member State and whether he adheres to his stated intent; (iii) whether the user offers post-sales activities in the Member State, such as warranty or service; (iv) whether the user undertakes further commercial activities in the Member State which are related to the use of the sign on the Internet but which are not carried out over the Internet. 
3. The connection of an offer of goods or services on the Internet with the Member State, including: (i) whether the goods or services offered can be lawfully delivered in the Member State; (ii) whether the prices are indicated in the official currency of the Member State.
4. The connection of the manner of use of the sign on the Internet with the Member State, including: (i) whether the sign is used in conjunction with means of interactive contact which are accessible to Internet users in the Member State; (ii) whether the user has indicated, in conjunction with the use of the sign, an address, telephone number or other means of contact in the Member State; (iii) whether the sign is used in connection with a domain name which is registered under the ISO Standard country code 3166 Top Level Domain referring to the Member State; (iv) whether the text used in conjunction with the use of the sign is in a language predominantly used in the Member State; (v) whether the sign is used in conjunction with an Internet location which has actually been visited by Internet users located in the Member State.
5. The relation of the use of the sign on the Internet with a right in that sign in the Member State, including: (i) whether the use is supported by that right; (ii) whether, where the right belongs to another, the use would take unfair advantage of, or unjustifiably impair, the distinctive character or the reputation of the sign that is the subject of that right.

Specifically, the Superintendence, under a strict interpretation of the abovementioned, argued that, in order to prove the actual and effective use of a trademark, evidence seeking to demonstrate the intention to use it cannot be considered, as is the case of advertising through Internet. It must, at least, prove that the products or services covered by the trademark have been made available to the public, so that they can acquire them. In brief, the Office established that real and effective use of the trademark is externalized through the commercial activity and economic exploitation thereof.

In this order of ideas, the Superintendence made it clear that, for the use of a trademark on the Internet to be considered as actual and effective use in the market, it cannot be limited to demonstrating the promotion of the sign object to cancellation, since the evidence provided must determine (i) the quantities of products offered; (ii) those actually sold and; (iii) the level of considers who have had contact or who have asked or observed this series of products.

Based on the above, it can be concluded that, unless the evidence of use of the trademark on the Internet is able to demonstrate the quantities of products offered and effectively sold, as well as the percentage of consumers who approach them, this could only be considered as complementary evidence within a non-use cancellation process. This, considering that, if it is presented as main evidence, it is very likely that the Office would consider that it, per se, does not demonstrate the actual and effective use of the trademark, which is not validated though the mere intention of use or through advertisement.