Colombia: Trade Mark Issues in the Andean Community

The Andean Community is a subregional organization that began with the subscription of the Cartagena Agreement on May 26, 1969. It gathers the five Andean countries, namely, Bolivia, Colombia, Ecuador, Peru and Venezuela, and its purpose is to harmonize their commercial policies, including industrial property.

The Andean Community has a system of laws of its own that are applied hierarchically: first, the Community Protocol; then, the Decisions made by the Commission, and finally the Resolutions of the Board.

The judicial body that resolves the differences arising between the member countries is the Court of Justice of the Andean Community. It is seated in Quito, Ecuador, and is formed by five Justices, one from each Member Country.

Intellectual property in the Andean Community is governed by Decision 486 of 2000. It was enforced on December 1, 2000, and superseded Decision 344, which was enacted in 1993.

Decision 486 provides stronger protection to Intellectual Property than Decision 344 did, and introduced some changes in the trademark field:

1. The registration as trademarks of descriptive and generic signs, common or usual expressions, and even individual colors is allowed, provided that the legal owner can prove that the use of the trademark has taken consumers to identify the expression with the specific product or service. For example, the sign "cleaner" for identifying a detergent product, or the sign "chair" for identifying a specific chair, may be registered always provided that it can be proved that the sign has become distinctive through its use.

2. Import or export of products that infringe a trademark has been forbidden. A procedure has been established to control the infringement, which procedure includes withdrawal of the products from the marketplace, destruction of the products, temporary or permanent closure of the infringer’s commercial establishment, and indemnity for damages.

3. Oppositions: Decision 344 had established that both the owner and/or the first-in-time applicant of a trademark could oppose the registration of an identical or similar trademark in any of the Andean countries. Decision 486 added that the opposing party must now show an actual interest in the market of the country where the opposition is to be filed. For this purpose, the opposing party must apply for the registration of the mark, if it is not registered in said country.

In connection with this new requirement, something curious happened some time ago. Some countries used to apply it under Decision 344. In some opportunity, one of this countries was lawsuit for demanding a condition not contemplated in the Andean legislation. The Court of Justice ruled against this country for violation of the legislation, which occurred, paradoxically, when Decision 486 was already in force.

4. Cancellation of a trademark based on non-use: Although this mechanism was contemplated in Decision 344, Decision 486 is more accurate in aspects such as who are the persons authorized to use the mark, which are the mechanisms for proving the use of the mark, and prosecution of the action.

The action may be instituted by an interested party in any of the Andean Community Countries to cancel the registration of a trademark that has not been used during at least three years without a justified reason, and even so, constitutes and obstacle to register or is used to oppose the registration of another trademark.

According to Decision 486, it is understood that a trademark is being used when:

The manufacturer, service supplier, or person lawfully authorized identifies the product or the service with a trademark of his own, or with a trademark whose use has been authorized thereto.

The products or services covered by the trademark have been placed in commerce by the proprietor, a licensee or an authorized person.

The products or services are available in the market, in the amounts and in the manner as appropriate according to the nature of the products and services and their commercialization requirements.

As to the persons who can validly prove the use of the mark, the Decision stipulates that they are the proprietor, a licensee, or a person duly authorized to use the mark.

Among the main precepts that can be extracted from the rulings of the Andean Court of Justice in trademark proceedings, we can mention the following:

1. Rights granted by a trademark registration

"The only manner of acquiring an exclusive and preferential right in a trademark in the Andean Community is through registration, which is an act that, pursuant to the Andean Community system, creates a right, and does not just declare it" .

The Court has clarified that registration grants the owner of a trademark the right of exclusive use, "which includes both an affirmative right and the power to prohibiting unauthorized use (ius prohibendi)".

Likewise, the owner of a trademark registered in the Andean Community may exercise four specific powers:

To use the trademark on the product or service for which it was granted, or on its container or packaging

To institute judicial and/or administrative actions to prevent undue use of the trademark by third parties

To commercialize the products or services covered by the trademark

To advertise the trademark and prevent third parties from advertising it.

"Word trademarks must be compared pursuant to the following rules:

Rule 1. The confusion found must result from the first impression caused by the trademarks taken as units.

Rule 2. The trademarks must be examined successively, not simultaneously.

Rule 3. The examiner must take to the place of a potential consumer and take into account the nature of the product.

Rule 4. The similarities, and not the differences, existing between the trademarks must be taken into account" .

The first rule is the most important according to the Court, since it refers to the first impression caused by a trademark on the average consumer, which can lead to confusion with respect to other similar trademarks available in commerce.

This rule finds its exception when comparing trademarks of pharmaceutical products, since they typically contain generic prefixes, suffixes, syllables or expressions (e.g., "oxy" for oxygen) that, precisely for being of common use in medicine and pharmacy, may not be appropriated by anyone and cannot be taken into account at the time of performing the examination of the mark as a unit.

This convention was subscribed by France and Colombia for the protection of industrial property. One of its articles reads: "For ensuring the protection guaranteed in the preceding article, the applicants from either country do not need to establish their residence or a commercial representation in the country where they claim protection; however, they must observe the other conditions and formalities provided for by the laws and regulations of said country".

The Appellate Court and some Colombian doctrine had always affirmed that this article should be construed in the light of the principle of territoriality, and consequently, for a trademark registered in France to enjoy protection in Colombia, it should also be registered in this country.

However, now it is possible to say that in the Andean Community there has been a change in the interpretation of trademark territoriality.

The first big step was taken in February 2002, when the Supreme Court of Justice of Colombia stated that "the commercial globalization and liberalization process has "softened" the application of the principle of trademark territoriality" .

The Court made this statement when annulling a ruling of the Appellate Court of Bogota according to which the owner of the trademark LOUIS VUITTON, registered in France more than 100 years ago, had no rights in the mark in Colombia because another person had registered it in this country 20 years ago.

The owner of the French trademark LOUIS VUITTON appealed from this ruling before the Supreme Court of Justice, considering that it was violating his commercial rights due to a wrongful interpretation of the Colombian-French Convention of 1901, approved under Decree 597 of 1904.

The Supreme Court decided the case stating that, both the wording of the Convention and the "prevailing economic conditions -given that provisions must be interpreted according to the reality of the times in which they will be applied- imply a valid extra-territoriality projection based on which the claim must be granted (in favor of Louis Vuitton); otherwise the efficacy of the treaty would be denied".

Consequently, trademark rights duly obtained in France enjoy protection in Colombia even if the mark has not been registered in this country.

Another interesting case is that of the trademark HAWAIIAN TROPIC. The Superintendency of Industry and Commerce of Colombia, based on the Washington Convention of 1929, revoked a resolution through which the registration of the combined trademark HAWAIIAN TROPIC, class 3, had been granted to corporation Hawaiian Tropic Ltda.

The proceeding had begun with a legal remedy filed by corporation Tanning Research Laboratories Inc (TRL INC.) against said decision. The grounds of the remedies were that the mark applied for was confusingly similar to the trademark HAWAIIAN TROPIC owned by Tanning Research Laboratories Inc, previously registered in the United States, Ecuador and Bolivia, for which reason its registration would violate the Washington Convention of 1929.

This Convention establishes that the proprietor of a trademark legally protected in any of the contracting states may oppose the use or the registration of an identical or similar trademark in other contracting party by proving that the person who is using or applying to register it had knowledge that the mark was in use and applied to products of the same class.

Tanning Research Laboratories Inc (TRL inc) proved that the United States and Colombia were parties to the Washington Convention; that Tanning Research Laboratories was the owner in the United States of the trademark HAWAIIAN TROPIC, and that Hawaiian Tropic Ltda. had knowledge that the mark was registered in the United States, since Tanning Research Laboratories had authorized it to commercialize and bottle the product in Colombia.

So far, the Andean juridical order does not contemplate a community trademark as the legislation of the European Union does. It is still necessary to register trademarks in each one of the member countries of the Andean Community for ensuring protection. However, we might be taking steps in this direction.

Indeed, there are provisions allowing the opposition to trademarks used or applied for outside national boundaries.

On the other hand, the commercial globalization and liberalization process has changed the interpretation, and therefore the application, of the territoriality principle, to actually begin to avoid trademark piracy.

Finally, Article 270 of Decision 486 provides for that "the member countries, supported by the General Secretariat, shall implement an Andean information system containing all the industrial property rights registered in each one of them, and shall interconnect their databases by December 31, 2002".

These are provisions and rulings that involve the possibility of extending to other countries of the Andean Community the protection of a trademark registered in one of them, which could lead to attain at a later time the institutionalization of the community trademark.