Volume 4, Number 34, Page 3

Honduras: Non-Use of Registered Marks

Under Honduras’ current Industrial Property Law, registered marks that have not been used in Honduras for a one-year period may be subject to cancellation on the grounds of non-use, following a simple petition by an interested third party. Once a cancellation action on the grounds of non-use has been commenced, rehabilitation taxes cannot be paid in arrears. In these cases, proof of use of the registered mark will fall on the registrant.

Under the operative statute, normal use of a mark depends upon size of market, nature of the products or services, and the way the products or services are marketed. Lack of economic resources due to insufficient demand for the products or services covered by a mark in the Honduran market will not be considered just cause for non-use. When non-use of the mark affects only one or some of the products/services covered by a given registration, the cancellation will be resolved by reducing or limiting the coverage of the registration.

The use of a mark by a licensee will be attributed to the registrant for all purposes of the Law if the license has been duly recorded before the Honduran Trademark & Patent Office.

Accordingly, if the owner of a trademark is not using its mark in Honduras, we would consider it prudent to pay the rehabilitation tax for non-use on an annual basis. If the mark is in use in Honduras, no annual tax is payable, since the old "annuity taxes" were abolished by the Industrial Property Law of Dec. 24, 1993.

Lic. Ricardo Aníbal Mejía M. is a partner in the law firm Bufete Mejía & Asociados.