From Use to Presence: The Structural Obsolescence of Territorial Use and the Emergence of Reputational Use as a New Paradigm*
Abstract
The recent INTA Board Resolution on well-known marks confirms a long-anticipated evolution: the progressive decoupling between territorial use and trademark protection. However, this development remains incomplete. The system continues to rely on a traditional concept of use that proves insufficient in light of today’s digital and global reality. This paper proposes going one step further: not only recognizing notoriety, but abandoning use as a central category and replacing it with a new paradigm—reputational use.
Contents
I. Introduction.
II. Use as a Requirement in Crisis.
III. From Use to Reputational Use.
IV. Empirical Validation: The Breakdown of the Territorial Paradigm.
V. Manifestations of Reputational Use.
VI. The INTA Resolution: Advances and Limits.
VII. The Structural Contradiction of the System.
VIII. Conclusion: Toward a Paradigm Shift.
I. Introduction
Trademark law continues to operate on a premise that no longer withstands confrontation with contemporary economic and technological reality: the identification between use and territorial presence.
For decades, the logic was clear: a trademark had to be used within the territory to justify its legal existence. Actual use in the local market constituted not only the basis for protection, but also the condition for maintaining the right ¹.
However, this assumption has been eroded by phenomena that the legal system did not anticipate. The globalization of markets, the digitization of consumption, and the expansion of technological platforms have blurred traditional boundaries, generating a growing dissociation between commercial presence and territorial presence ².
Today, trademarks circulate, position themselves, and generate value without the need for physical establishment in each jurisdiction.
The problem is no longer the rigidity of use.
The problem is use itself.
II. Use as a Requirement in Crisis
The Argentine trademark system requires effective use of the mark within the territory as a condition to avoid cancellation ³.
This model made sense in a context where commercial presence coincided with physical presence. However, today we encounter trademarks that:
- are known before entering the market,
- generate clientele without local commercialization, and
- remain in the consumer’s mind even after disappearing.
Paradigmatic cases illustrate this reality. Brands such as Starbucks and McDonald’s became embedded in the Argentine collective imagination before their actual market entry, generating prior recognition.
This already showed decades ago that the relationship between use and brand awareness was no longer linear. A phenomenon emerged in which local recognition became detached from effective use in the local market. It was no longer necessary to make a product or service available for the brand to be recognized and to have value, even independently of the traditional concept of customers.
III. From Use to Reputational Use
In response to this transformation, the system attempted to broaden the concept of use, admitting indirect forms such as advertising or digital presence ⁴.
However, this flexibility is insufficient.
The traditional concept of use focuses on the conduct of the rights holder. But the essential function of a trademark lies in its effect: identifying a business origin in the consumer’s mind ⁵.
Therefore, the analysis must shift from conduct to perception.
In this context, we propose replacing the concept of use with that of reputational use, understood as the ability of a sign to generate an effective association in the consumer’s mind with a business origin, regardless of the existence of local commercialization.
IV. Empirical Validation: The Breakdown of the Territorial Paradigm
Recent case law confirms this shift.
In Standard International Management LLC v. EUIPO ⁶, the General Court of the European Union held that the analysis of use should not focus on the place where services are provided, but rather on where the trademark fulfills its distinctive function.
Similarly, in *Ontro Limited v. Delta Air Lines, Inc.* ⁷, the Board of Appeal recognized that, in global services, advertising and international visibility constitute sufficient evidence of use.
Both precedents demonstrate the loss of centrality of rigid territorial criteria.
V. Manifestations of Reputational Use
a) “Zombie” trademarks
There are trademarks which, even after commercial exploitation has ceased, remain alive in the consumer’s memory. This phenomenon has been analyzed doctrinally under the category of “dead trademarks” ⁸.
Allowing their reappropriation would mislead consumers and undermine principles of fair competition ⁹.
b) Fans of global brands
Social media has created consumers who know and value brands without access to their products or services. This demonstrates that trademark interaction no longer depends on transaction, but on the symbolic construction of the brand within the digital environment ¹⁰.
VI. The INTA Resolution: Advances and Limits
The recent INTA Board Resolution on well-known marks constitutes one of the most relevant developments in recent years.
Its starting point is revealing: it acknowledges that the current global framework is insufficient in light of transformations in commerce, information, and consumer behavior ¹¹.
It establishes that domestic use should not be a condition for determining notoriety ¹², nor should local registration be required ¹³.
It also allows evaluation based on global notoriety ¹⁴ and introduces a flexible evidentiary system including sales, advertising, social media, press coverage, surveys, and collaborations ¹⁵, clarifying that these are not exhaustive conditions ¹⁶.
It further redefines the “relevant sector of the public” ¹⁷ and recognizes that consumers may become aware of foreign brands prior to their market entry through digital channels ¹⁸.
This leads to a clear conclusion: the resolution builds a model in which legal relevance is based on recognition and association in the public, regardless of territorial use.
However, the advance remains incomplete.
VII. The Structural Contradiction of the System
The system allows a trademark to:
- block third-party registrations based on notoriety, but
- be cancelled for lack of use.
This inconsistency reveals the coexistence of incompatible criteria within trademark law.
VIII. Conclusion: Toward a Paradigm Shift
Trademark law is in transition.
The solution is not to expand use, but to replace it.
Reputational use offers a more appropriate conceptual framework, aligned with the essential function of trademarks and the reality of the contemporary market.
This is not an exception.
It is a paradigm shift.
*This article was originally published on ElDial.com on April 21, 2026.
Footnotes References:
- Trademark and Designations Law, Law No. 22,362, art. 4.
“The ownership of a trademark and the exclusive right to use it are acquired through registration. To be the owner of a trademark or to exercise the right to oppose its registration or use, a legitimate interest of the applicant or the opponent is required.”
Available at: https://servicios.infoleg.gob.ar/infolegInternet/anexos/15000-19999/18803/texact.htm
Accessed: March 31, 2026. - WIPO (World Intellectual Property Organization). World Intellectual Property Report. Various editions.
- Trademark and Designations Law, Law No. 22,362, art. 26.
“The National Institute of Industrial Property, ex officio or upon request of a party, in accordance with the applicable regulations, shall declare the cancellation of a trademark, including partially, with respect to the goods or services for which it has not been used in the country within the five (5) years preceding the request for cancellation, unless there are force majeure circumstances (…).”
Available at: https://servicios.infoleg.gob.ar/infolegInternet/anexos/15000-19999/18803/texact.htm
Accessed: March 31, 2026. - National Federal Court of Appeals in Commercial Matters, Chamber II, El Trust Joyero Relojero S.A. v. Carvallo, October 6, 2011
- Court of Justice of the European Union (CJEU), Case C-206/01, Arsenal Football Club plc v. Matthew Reed, judgment of November 12, 2002.
- General Court of the European Union (GCEU), Case T-768/20, Standard International Management LLC v. EUIPO, judgment of July 13, 2022.
- EUIPO, Board of Appeal, Case R-361/2023-4, Ontro Limited v. Delta Air Lines, Inc., decision of August 15, 2023.
- Cacciali Puga, Andrés O. “Dead Trademarks. The Misappropriation of Another’s Goodwill.” RYD República y Derecho Journal, Argentina, 2018.
- Antitrust Law, Law No. 27,442.
Available at: https://servicios.infoleg.gob.ar/infolegInternet/anexos/310000-314999/310241/norma.htm
Accessed: March 31, 2026.
Consumer Protection Law, Law No. 24,240.
Available at: https://servicios.infoleg.gob.ar/infolegInternet/anexos/0-4999/638/texact.htm
Accessed: March 31, 2026. - Kapferer, Jean-Noël. The New Strategic Brand Management: Creating and Sustaining Brand Equity Long Term. Kogan Page Limited, United Kingdom and United States, 2008.
- INTA (International Trademark Association). Updated Framework for Well-Known Marks Protection, Board Resolution, November 18, 2025.
“The existing global framework for protecting well-known marks fails to adequately protect well-known marks considering the commercial, information and consumer trends that have developed globally over the past decades, to the detriment of consumers, brand owners, and governments.”
Available at: https://www.inta.org/wp-content/uploads/public-files/advocacy/board-resolutions/111825-Well-Known-Marks-Protection-Updated-Framework-INTA-Board-Resolution.pdf
Accessed: March 31, 2026, p. 1. - INTA (International Trademark Association). Updated Framework for Well-Known Marks Protection, Board Resolution, November 18, 2025.
“Domestic use (within the jurisdiction where well-known mark protection is sought) shall not be a condition for determining whether a mark is a well-known mark within that jurisdiction.”
Available at: https://www.inta.org/wp-content/uploads/public-files/advocacy/board-resolutions/111825-Well-Known-Marks-Protection-Updated-Framework-INTA-Board-Resolution.pdf - INTA (International Trademark Association). Updated Framework for Well-Known Marks Protection, Board Resolution, November 18, 2025.
“Domestic registration or application for registration (within the jurisdiction where well-known mark protection is sought) shall not be a condition for determining whether a mark is a well-known mark within that jurisdiction.”
Available at: https://www.inta.org/wp-content/uploads/public-files/advocacy/board-resolutions/111825-Well-Known-Marks-Protection-Updated-Framework-INTA-Board-Resolution.pdf
Accessed: March 31, 2026, p. 2. - INTA (International Trademark Association). Updated Framework for Well-Known Marks Protection, Board Resolution, November 18, 2025.
“Evaluation of well-known marks may be based on their global notoriety, not just their domestic notoriety.”
Available at: https://www.inta.org/wp-content/uploads/public-files/advocacy/board-resolutions/111825-Well-Known-Marks-Protection-Updated-Framework-INTA-Board-Resolution.pdf
Accessed: March 31, 2026, p. 2. - INTA (International Trademark Association). Updated Framework for Well-Known Marks Protection, Board Resolution, November 18, 2025.
“In determining whether a mark is a well-known mark, a competent authority should undertake a flexible evaluation of all relevant factors, including, but not limited to: (…)
b. global or domestic sales of goods or services bearing the mark (including sales conducted through cross-border or domestic e-commerce and sales made by third parties);
c. advertising expenses (within the jurisdiction, outside the jurisdiction, or both); (…)
f. market survey results;
g. social media presence (including social media activity controlled by the brand owner and social media activity by others, such as consumers);
h. domestic and foreign press covering the brand;
i. extent of collaboration projects (especially outside of the brand’s core classes) (…)”.
Available at: https://www.inta.org/wp-content/uploads/public-files/advocacy/board-resolutions/111825-Well-Known-Marks-Protection-Updated-Framework-INTA-Board-Resolution.pdf
Accessed: March 31, 2026, p. 2. - INTA (International Trademark Association). Updated Framework for Well-Known Marks Protection, Board Resolution, November 18, 2025.
“The above, non-exhaustive list of factors, which are guidelines in determining whether a mark is a well-known mark, are not preconditions for reaching that determination. Rather, the determination in each case will depend upon the particular circumstances of that case. In some cases, all the factors may be relevant; in other cases, only some will be relevant; and in others, none of them may be relevant. The decision may be based on additional factors not listed above.”
Available at: https://www.inta.org/wp-content/uploads/public-files/advocacy/board-resolutions/111825-Well-Known-Marks-Protection-Updated-Framework-INTA-Board-Resolution.pdf
Accessed: March 31, 2026, p. 2. - INTA (International Trademark Association). Updated Framework for Well-Known Marks Protection, Board Resolution, November 18, 2025.
“The ‘relevant sector of the public’ should include (1) actual or potential consumers; (2) channels of distribution; and (3) business (industry) sector representatives; awareness among the public or consumers at large shall not be a condition for determining whether a mark is a well-known mark.”
Available at: https://www.inta.org/wp-content/uploads/public-files/advocacy/board-resolutions/111825-Well-Known-Marks-Protection-Updated-Framework-INTA-Board-Resolution.pdf
Accessed: March 31, 2026, p. 3. - INTA (International Trademark Association). Updated Framework for Well-Known Marks Protection, Board Resolution, November 18, 2025.
“Through today’s digital, global marketplace and expansive media reach (both traditional and social media), consumers in one market often learn of a foreign brand well before the brand is available in that market, even well before the brand anticipates entering that market.”
Available at: https://www.inta.org/wp-content/uploads/public-files/advocacy/board-resolutions/111825-Well-Known-Marks-Protection-Updated-Framework-INTA-Board-Resolution.pdf
Accessed: March 31, 2026, p. 4.
