Colombia: Decision 486 (2000) The New Intellectual Property Law Of The Andean Community

Colombia, Venezuela, Ecuador, Perú and Bolivia.

Decision 486 establishes the new legal framework for intellectual property applicable to members of the Andean Community. Decision 486 became effective on December 1, 2000, superceding Decision 344, which was enacted in 1993.

Yes, with respect to international protection for intellectual property and subject to a few exceptions, member nations of the World Trade Organization and the Paris Convention on Protection of Industrial Property are granted most favored nation status and treated the same as nationals of the Andean Community.

Decision 486 strengthens intellectual property protections. In addition to continuing the existing provisions regarding criminal actions and unfair competition, the new law:

• Creates a uniform court procedure that allows simultaneous actions to be brought for infringements to patents, utility models, layout-design for integrated circuits, industrial designs, trademarks and commercial names in all member nations of the Andean Community. Prior to Decision 486, such actions had to be brought in each nation individually.
• Establishes a procedure that includes both injunctive relief and commercial consequences that may include withdrawal of the infringing products from the marketplace, destruction of the products, temporary or permanent closure of the infringer's commercial establishment and indemnification for damages.
• Prevents the import or export of products that infringe a trademark.
• Permits individuals or legal entities affected by the registration or application for the registration of a mark or industrial design filed by any other individual or legal entity in any other country of the Andean Community to institute an action to claim rights and demand an indemnification for damages. However, utility models cannot be the objects of such actions.

The Decision confirms that the first application for trademark, patent, utility model or industrial design registration validly filed in either a member nation of the Andean Community or with a national, regional or international authority pursuant to a treaty is granted the same priority rights as those granted by the Paris Convention. However, to be assured of these protections, the application should be filed within (1) twelve months for patents and utility models or (2) six months for trademark and industrial design registrations. These time periods cannot be extended and are counted from the date of filing of the application whose priority is invoked.

All intellectual property rights validly granted before the issuance of Decision 486 will be regulated by the provisions applicable on the date the rights were granted. However, if there was a change in the terms of the duration of the rights, the terms mandated by Decision 486 will apply. Decision 486 will govern all remaining steps in pending applications.

Decision 486 establishes that while applications must be submitted to the Patent and Trademark Office (PTO) in Spanish, the National Competent Office in each country may dispense with the filing of translations of documents. The Colombian PTO has already authorized this in some cases. In addition, Colombia and Venezuela have enacted the Apostille Convention of The Hague, which simplifies legalization of public documents to be utilized abroad. Ecuador, Peru and Bolivia had not done so as of May 2001.

The national PTOs should have their databases interconnected no later than December 31, 2002.

There are no significant changes under Decision 486 concerning patents. However, there are some changes, including the following:

• New uses of a patented product or process may not be patented.
• When a patent application is filed, any assignment by the inventor to the applicant as well as a copy of any foreign patent or patent application for the same invention shall be filed.
• Patent license agreements cannot be registered if they do not meet Andean provisions on licenses or when they infringe provisions on restrictive commercial practices of the Andean Community.
• The reasons for patent nullity are extended to include essential or procedural defects in the invention. Actions to nullify a patent must be filed within five years from the date the patent was granted or two years from the date the defects became known.

Yes. The member countries of the Andean Community agreed to respect the biological and genetic heritage, as well as the traditional knowledge of its Indian, African American and indigenous populations. Consequently, no patents based on this heritage, tradition or the indigenous knowledge of these peoples will be granted unless they are in compliance with national, international and Andean Community laws.

One of the novel aspects of the new law is its regulation of the lay-out design (topographics) of integrated circuits, which are the three dimensional arrangement of its elements. In general, the new law requires the design to be original. If a lay-out design has been used commercially anywhere in the world, the registration application must be filed within two years of its first commercial use.

The Patent and Trademark Office (PTO) of the Andean country will register industrial designs that meet the requirements set out in Decision 486 (e.g., that the industrial designs be novel and registrable) without examining the content of the application. Additionally, the registration period is extended from eight (8) years to ten (10) years.

Decision 486 recognizes certification marks as entitled to protection. A certification mark is a sign designed to be applied to products or services used by others whose quality or other specified characteristics have been certified by the legal owner of the mark as meeting those requirements.

Decision 486 permits the registration of descriptive and generic terms, common or usual expressions, and even individual colors, provided the owner of the mark can prove that the mark allows consumers to identify the expression with its specific product or service. For example, the word "cleaner" for identifying a detergent product, or the word "chair" for a type of furniture may be registered provided it can be shown that the term has distinctive capacity and is associated with the specific product with which it is used.

Decision 486 permits the licensing of marks for which applications for registration have been filed. Under prior law, only registered marks could be licensed.

Unless the owner of a mark can show that the lack of use was due to force majeure or other unforeseen event, a party in interest can petition the Patent and Trademark Office (PTO) of the Andean country to cancel the registration of a mark that has not been used in at least one of the member countries of the Andean Community by its owner, a licensee, or other authorized user during the three-year period immediately preceding the date the cancellation action is filed.

The owner of a mark that has legally introduced a product or service in a country and commercializes it cannot prevent third parties from subsequently doing business with such product or service.

Decision 486 expands trademark protection previously afforded under Decision 344 for well-known and distinctive trademarks, trade names, trade emblems and other commercial identification. The owners of well-known and distinctive marks can prevent third parties from using the mark if the use could cause unfair economic or commercial damage derived from the dilution of either the distinctiveness, strength or value of the mark, or the prestige of the trademark or its owner.

Well-known marks may not be denied protection merely because they (1) are not registered or in the process of being registered in an Andean Member Country or abroad, (2) have not been used or for are not being used to distinguish products or services, or (3) are not well-known abroad. The statute of limitations runs for five years from the date the well-known mark owner becomes aware of the unauthorized use unless the use has been made in bad faith, in which case the right of action will not lapse.

Decision 344 was quite general in the treatment of trade names and enforcement had to be specified by each member of the Andean Community.

Decision 486 provides significant detail concerning the protection of trade names and modifies the old law as follows:

• Defines a "trade name" as any mark that identifies an economic activity, enterprise or mercantile establishment.
• Clarifies that the right in a trade name is acquired rom its first use and terminates together with the activities of the enterprise.
• Establishes that trade names may be licensed.
• Provides that trade names may be protected as industrial property.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.