Cancellation for non-use can be used to avoid market monopoly in Sao Tome and Principe

Trademark owners have exclusive rights to exploit their protected goods and/or services, which prevent others from using equal or similar distinctive signs in the jurisdiction in which their rights are valid. In some cases, trademark owners adopt defensive strategies and file trademark applications in classes that are not directly related to their business in order to obtain the widest scope of protection and prevent third parties from filing similar marks that could dilute theirs. This leads to the monopolisation of a mark that might not be used in all registered classes and the occupation of a market share that could be used by other companies that are struggling to gain their place in commerce and grow financially.

The Industrial Property Law allows applicants to file a cancellation for non-use in order to prevent undue market monopolisation. In Sao Tome, although use of a mark is not a prerequisite to file a new application, Article 205 states that a trademark's expiration must be declared if it has not been seriously used for five consecutive years from the application filing date. While the Sao Tome and Principe Intellectual Property Office does not ex officio monitor serious use, it does allow any interested party to file a request for cancellation due to non-use. The steps for this are as follows:

• A cancellation for non-use is submitted to the IP office.
• The other party must reply within three months or file a one-month extension to reply.
• The trademark owner or licensee must provide evidence of the trademark's use. Otherwise, non-use will be assumed.
• The IP office will issue a decision within three months after the deadline to file the reply has passed.
• The non-use cancellation will be recorded and advertised in the IP Bulletin. 

The onus in cancellation proceedings is on the trademark owner; the party interested in filing the cancellation for non-use is not responsible for providing proof of non-use. However, it must present a declaration expressing its interest in the trademark's cancellation, which claims that the mark has not been used.

The commencement or resumption of serious use within the three months immediately preceding the filing of a non-use cancellation will not be considered if such use occurred only after the trademark owner received the cancellation notification. In addition, where there are grounds for the registration of a trademark to lapse with regard to only some of the registered goods or services, the cancellation will apply to these goods or services only.

Trademark owners can also file for:

• the cancellation of bad-faith registrations;
• the cancellation of unfair competition registrations;
• a declaration of consent between the involved parties; and
• the grant of a licence of use.

However, due to the limited case law on cancellations on the grounds of bad faith or unfair competition, filing for these is not recommended.

This is a co-published article, which was originally published in the World Trademark Review (WTR)