P.R. Laws tit. 10, § 223q
(a) Any person who believes that he/she has been damaged by the registration of a mark, including damage by dilution of the distinctive nature of a mark under § 223y of this title, may request the Secretary to cancel said registration. Except as provided in subsection (c) of this section, the Secretary shall only cancel a registration when a petition stating the grounds relied upon filed under oath has been timely submitted under any of the following grounds:
(1) Within five (5) years from the date of the registration of a mark.
(2) At any time, if:
(A) The registered mark has been abandoned;
(B) the registered mark is functional;
(C) the registration was obtained fraudulently or contrary to the provisions of subsections (1) or (2) of § 223c of this title;
(D) consists of or includes a name, portrait, or signature identifying a living natural person, except by his written consent.
(E) the registered mark has become the generic name for the goods or services or a portion thereof for which it was registered with respect to which the cancellation is requested; or
(F) the registered mark is being used by or with the permission of the principal registrant so as to misrepresent the source of the goods or services on or in connection with which the mark is used.
(3) At any time, in the case of a certification mark, if the principal registrant:
(A) Does not control or is not able legitimately to exercise control over the use of such mark; or
(B) engages in the production or marketing of any goods or services to which the certification mark is applied; or
(C) permits the use of the certification mark for purposes other than to certify; or
(D) discriminatorily refuses to certify or to continue to certify the goods or services that meet the quality corresponding to such certification mark.
(b) The five (5)-year term set forth in subsection (a)(1) of this section is an expiration term whose noncompliance impairs the cancellation of a registration, except as provided in clauses (2) and (3) of subsection (a) and subsection (d) of this section.
(c) Once a petition to cancel a registration is filed it shall be granted in accordance with procedure established by the Secretary for such purposes through regulations.
(d) The Secretary shall also cancel the registration of a mark in the following cases:
(1) Any registration for which the voluntary cancellation thereof was requested;
(2) Any registration not in use, to which the use of the mark was not attested, pursuant to subsection (b) of § 223b of this title;
(3) Any registration not renewed pursuant to § 223p of this title;
(4) Any registration with respect to which a court with competent jurisdiction has found:
(A) That the cancellation of the registered mark proceeds under clauses (2) and (3) of subsection (a); or
(B) That the use of the registered mark infringes a valid right acquired through the registration of a mark in the Principal Register set forth in the Lanham Act, provided, that such right is effective in Puerto Rico through the use of such mark in Commerce and subject to the remedies to which the principal registrant may be entitled.
(e) The right of the principal registrant of a mark to use such mark in commerce for or in connection to the goods or services with which such registered mark is still in use in commerce and has been in continuous use in commerce, for five (5) consecutive years subsequent to the date of registration, shall be incontestable, provided that the requirements set forth in clause (1) and the defenses established in clause (3) of this subsection are met.
(1)
(A) There has been no final decision adverse to the claim of ownership of such mark for or in connection to such goods or services, or to the principal registrant’s right to register the same or to keep the same on the register;
(B) There is no proceeding involving said rights on such mark pending in the Register or in a court and not finally disposed of;
(C) An affidavit is filed within one (1) year after any period of five (5) consecutive years of continuous use subsequent to the date of registration of the mark, setting forth those goods or services stated in the Certificate of Registration, on or in connection with which such registered mark has been in continuous use in commerce for five (5) consecutive years and is still in use in commerce, and other matters specified in paragraphs (A) and (B) above;
(D) Payment of fees as prescribed by the Secretary through regulations; and
(E) No incontestable right shall be acquired in a mark which is the generic name for the goods or services or a portion thereof, for which it is registered.
(2) To the extent that the registration of the mark has become incontestable, the registration shall be conclusive evidence of the validity of the registered mark and the registration of the mark; of the principal registrant’s ownership of the mark, and of the principal registrant’s exclusive right to use the registered mark in commerce. Such conclusive evidence shall relate to the exclusive right to use the registered mark on or in connection with the goods or services specified in the declaration of incontestability, subject to any subsequent limitations in the registration, and subject to any conditions or limitations in the registration or in such declaration of incontestability.
(3) The conclusive evidence of the exclusive right to use the mark may only be counteracted if trademark infringement is proven, and one of the following defenses:
(A) That the cancellation of the registration of the incontestable mark applies under clauses (2) or (3) of subsection (a) of this section;
(B) That the incontestable right to use the mark was obtained fraudulently;
(C) That the use is a non-trademark use of the registered and incontestable mark to describe the goods or services of the alleged offender or their geographic origin;
(D) That the use of the registered and incontestable mark infringes an acquired right and not abandoned by the use in commerce of a mark prior to the date of the first use and the date of registration of the registered mark. When this defense applies, the court shall determine the rights of the parties pursuant to the equitable principles and the purposes of this chapter, including, for example, if the owner of the registered mark acted in good or bad faith, if the first user committed laches, and to what extent the marks may coexist with set limitations to avoid the probability of confusion.
(E) That the use of the registered and incontestable mark infringes a previous right acquired by the registration of a mark in the Principal Register set forth in the Lanham Act, provided that such right is valid in Puerto Rico by the use of such mark in commerce and subject to the defenses of the holder of the registered and incontestable mark provided by law;
(F) That the registered and incontestable mark has been or is being used to violate the antitrust laws;
(G) That equitable principles, including laches, estoppel, and acquiescence, are applicable; or
(H) The provisions regarding the incontestability of a mark set forth in this subsection shall apply to all the registered marks, upon meeting all the requirements set forth in this subsection.
History —Dec. 16, 2009, No. 169, § 20; July 12, 2011, No. 124, § 8.