Trademark Cancellation for Non-Use: The “Silent Death” of a Registration and the "Ping Pong" and "Pl

It is often assumed that, once a trademark is registered, its owner enjoys a kind of “perpetual guarantee” of exclusivity over that sign. Indeed, a trademark application duly granted by the INPI secures for its owner the exclusive right to use the mark throughout Brazil, as well as the right to assign the registration, license its use, and preserve its material integrity and reputation, pursuant to Articles 129 and 130 of the Brazilian Industrial Property Law. But that is only the beginning.

The Brazilian Industrial Property Law – LPI (Law No. 9,279/96), in Article 142, provides for certain grounds for the termination of a trademark registration, including cancellation for non-use. In general terms, cancellation for non-use may be understood as the “death” of a trademark registration due to lack of genuine use or use with substantial alteration of the distinctive character of the registered mark. In practice, it is the result of neglect or inaction by the owner who, after five years from the grant of the registration, may have the mark cancelled where: (i) use of the mark in Brazil has not commenced; (ii) use of the mark has been discontinued for more than five consecutive years; or (iii) the mark has been used with modifications that alter its original distinctive character, as reflected in the registration certificate (Article 143, LPI).

This is precisely what happened to two of Brazil’s most famous chewing gum brands: Ping Pong and Ploc. Intercontinental Great Brands LLC, a Mondelēz subsidiary and the owner of registrations for those marks, had not commercialized the products since 2015 and, due to the lack of evidence of genuine use, the INPI declared the registrations cancelled for non-use.

Cancellation for non-use, however, does not occur automatically: it must be requested by an interested third party, subject to the applicable legal requirements. In this regard, the petitioner must demonstrate a legitimate interest, whether through a registration, trademark application, or other rights evidencing its interest or activity in an identical or related market segment, and, as of the filing date of the cancellation request, at least five years must have elapsed from the date of grant of the registration. In other words, the period assessed for purposes of determining genuine use of the mark will cover the five years preceding the filing date of the cancellation request, as illustrated below:

Therefore, once a cancellation request has been filed, it is for the trademark owner to prove that the mark was genuinely used during the relevant assessment period, or to justify any non-use on legitimate grounds.

The INPI Trademark Manual, item 6.5, identifies certain documents that may be used to prove use of a mark, such as invoices, receipts, service agreements, images of products, packaging, wrappers, tags, stickers, catalogues, brochures, commercial proposals, press articles, advertising materials, webpages, notarial records, and records of participation in trade fairs or commercial events.

In the case of the Ping Pong and Ploc marks, the cancellation requests were filed by ASC Brands & Entertainment, which had also applied to register the marks. Although Intercontinental Great Brands LLC expressed its intention to relaunch the products, it did not submit sufficient documentation to prove use of the marks during the relevant assessment period.

In this context, cancellation for non-use underscores the importance of ongoing trademark portfolio management. More than obtaining registration before the INPI, it is essential to monitor use of the mark in the marketplace, preserve documents evidencing such use, and assess whether the form in which the mark is being used remains consistent with the registration. Indeed, the Ping Pong and Ploc case shows that neither the size of the company nor the history of the brand is decisive: abandonment may result in the loss of rights.