First Steps Towards an Andean Community Trademark - International Law Office

Decision 344 of the Andean Community, which was issued on October 21 1993, introduced significant changes within the Andean Community. Among other things, the decision:

• created the Court of Justice of the Cartagena Agreement;
  
  
• regulated the right of priority and the rights of holders of well-known trademarks; and
  
  
• started the move towards the implementation of a common trademark regime - in particular, it created what would come to be known as the Andean opposition.

During the discussions leading to Decision 344, the Andean Community Commission considered whether it should establish a common trademark regime (ie, registration of a trademark in one country of the community would have direct and immediate effect in all other member countries). However, the proposal was discarded; the time was not right for a common trademark regime.

For this regime to become a reality, it was necessary to interconnect the computer systems of the Ecuadorian Institute of Intellectual Property, the Bolivian National IP Rights Service, the Colombian Superintendency of Industry and Commerce, the Venezuelan Industrial Property Office and the Peruvian National Institute for the Defence of Competition and the Protection of Intellectual Property. The authorities would then be adequately informed of all existing trademarks and trademark applications within the community, and could carry out complete registrability assessments.

To date, the implementation of a community trademark regime is still pending, but the commission took a step forward by creating the Andean opposition. Registration of a trademark in a member country still does not entitle the trademark holder to bring legal actions in another member country - simply because in Ecuador, for example, it is impossible to know which trademarks are registered in Colombia, Venezuela, Bolivia and Peru. However, it is now possible for trademark holders in a member country to oppose registration applications in another member country.(1)

Moreover, the Andean opposition unifies the various signs to be registered throughout the community until a community trademark regime is established. Without the Andean opposition, one sign could belong to different persons or companies at the same time in different member countries.

The final text of Decision 344 read as follows:

"Article 93

Within 30 working days of publication of the application for registration, any person with a legitimate interest can file objections to the registration of the trademark.

For the purposes of the present article, it is understood that the holder of an identical or similar trademark for products or services, with regards to which the public may be confused by the use of the trademark applied for, as well as the person who first requested the registration of that trademark in any of the member countries, have a legitimate interest in filing objections in other member countries."

This provision was welcomed by scholars. Marco Matías Alemán, for example, stated that:

"It is worth highlighting the great progress made regarding the extraterritoriality of trademark rights thanks to the new regulations, which provide trademark holders with a legitimate interest in filing objections to applications for the registration of the same trademark in any other member country."(2)

Moreover, Pachón and Sánchez Ávila expressed the following views:

"The person who first registered a trademark or first applied for registration of a trademark in any of the member countries has the right to file objections when, in another member country, a person wishes to register a trademark that is identical or similar to the one that has already been registered or applied for."(3)

Several years after issuing Decision 344, the commission issued Decision 486 to replace it. The new decision, which improved the Andean opposition, stated as follows:

"Article 146

Within 30 days of the publication date, persons with a legitimate interest can file - only once - a substantiated opposition that can weaken the case for registration of the trademark.

On request by any of the parties, the competent national office will grant - only once - an additional term of 30 days to present evidence supporting the opposition.

Reckless oppositions may be penalized under national legislation. Oppositions against trademark applications cannot be filed six months after the expiry of the grace period referred to in Article 153 if these oppositions are based on trademarks that have coexisted with the trademark applied for.

Article 147

For the purposes of the provisions of the foregoing article, it is understood that the holder of an identical or similar trademark for products or services, with regards to which the public may be confused by the use of the trademark applied for, as well as the person who first applied for the registration of that trademark in any of the member countries, have a legitimate interest in filing objections in other member countries. The opponent must demonstrate its interest in the market of the member country where the opposition is being filed and must apply for registration of the trademark when filing the opposition.

Filing an opposition based on a trademark which was already registered in another member country in accordance with the provisions of this article will enable the competent national office to dismiss the registration of the second trademark.

Filing an opposition based on a trademark application previously filed in any of the member countries in accordance with the provisions of this article will entail the suspension of the registration of the second trademark, until the registration of the first one has been granted. In that case, the provisions of the foregoing paragraph apply."

Decision 486 has reinforced the effect that the registration of trademarks in a member state of the community has in other member countries. Moreover, the decision established the right of priority: registration of a trademark is prohibited when it is similar or identical to a trademark registered in another member country. The decision also created the right to use a trademark in all member countries of the community (it is thus impossible to cancel a trademark based on lack of use where it is demonstrated that the trademark has been used in any other country of the community).

The Andean opposition was widely noted by the media. The following article was posted on the Andean Community's website:

"Andean Opposition

This is the assumption that allows the holder of a trademark registered in any member country to prevent the registration of an identical or similar trademark both in the country where it obtained the registration and in other member countries of the Andean Community. In this regard, two complementary mechanisms have been proposed: first, penalizing the offending registration by nullifying it, and second, the opposition itself, which provides the holder of a trademark with the possibility of defending its rights in proceedings in another member country.

The commission decided to maintain the Andean opposition as a procedural right to prevent registration (if the opposition is substantiated). However, the petitioner must demonstrate its legitimate interest in the market of the member country where the opposition is filed. This was completed by a transitional provision ordering the interconnection of the IP offices - a step towards using opposition as grounds for non-registrability, and then creating a common trademark regime.

These mechanisms prevent trademark territoriality from becoming a legal barrier to the free circulation of goods between member countries. The lack of a more complete opposition regime has favoured the creation of territorial divisions that compartmentalize the Andean Free Trade Area and prevent the application of the constitutional principle of free circulation of goods."(4)

However, the interpretation of Article 147 has not always been uniform and the Andean Court of Justice has had to delimit its scope on many occasions.

The Andean Community is still heading towards the implementation of a common trademark regime. A good illustration is the interconnection of the computer systems of the IP offices of Peru and Colombia.(5) Venezuela, Bolivia and Ecuador are expected to join over the next few years. Only then can the common trademark regime become a reality.

For further information on this topic please contact Juan Carlos Riofrío Martínez–Villalba or Flavio Arosemena Burbano at Coronel & Pérez by telephone (+593 2 2906 966) or by fax (+593 2 2523 306) or by email (jcriofrio@coronelyperez.com or farosemena@coronelyperez.com).

Endnotes

(1) This does not contradict the requirement that the trademark must be registered in every country in order to have exclusivity of usage. In fact, under Article 147 registration of the trademark is necessary in order to file an opposition.

(2) Matías Alemán, Marco, Normatividad subregional sobre marcas de productos y servicios, Ed Top Management, Bogota, p 115.

(3) Pachón, Manuel and Sánchez Ávila, Zoraida, El régimen andino de la propiedad industrial, Ed Gustavo Ibáñez, Bogota, 1995, p 270.

(4) Press release of the Andean Community: www.comunidadandina.org/politicas/intelectual2.htm.

(5) Press release of the Andean Community: www.comunidadandina.org/prensa/notas/np27-2-03.htm.