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The importance to record a change of address

Mantaining the address of the company updated in the trademark registrations is more important than it seems, as the Trademark Office is allowed to notify a cancellation action directly to the address that is reflected in the trademark registration.

The above is based on Art. 170 of Decision 486 of 2000 of the Andean Community, which establishes that “on receipt of petitions to cancel registrations, the competent national office shall request the owners of the trademarks in question to assert their arguments and submit the proof they deem fit within sixty working days counted from the date of notification”.

The Trademark Office has interpreted this Article of the Andean Community Pact along with our local law, in sense that the notification should be made by certified mail to the address that appears in the trademark registration. This rule is specially applied for those cases in which the attorney field a limited Power of Attorney and in which it is not expressively stated that the attorney is empowered to receive notifications of a cancellation action. The notification shall be directed to the legal representative of the company.

Thus, if the new address of a company is not recorded, there is a high risk that the owner of a trademark never hears that a third party is trying to cancel one of its trademarks. In addition, it is necessary to take into account that the burden of proof is in the owner of the trademark registration and therefore the failure to reply the cancellation action concludes with the total cancellation of the trademark registration by not filing the required evidence of use of the same.

In conclusion, no risks shall be run in relation to the defense of the trademark registrations rights by avoiding a fast and low cost procedure. Nowadays, the recordal of a change of address, along with a proper assistance, can be filed along with a simple declaration of the change and without having to file extra documentations. The recordal of the change will be recorded in less than a month, ensuring that the notifications of the Trademark Office will be properly sent to the place where it is guaranteed that they will be received.

Carmen Sánchez-Puelles