Andean opposition and real interest under Decision 486

According to Decision 486, rule which establishes the Common Regime on Industrial Property applicable to all member countries of the Andean Community (Bolivia, Colombia, Ecuador and Peru), rights in a trademark in any member country result from the registration of the trademark at the competent office of the respective member country.

In this way, protection obtained through the registration of a trademark in a member country of the Andean Community is territorial and, consequently, does not extend, in principle, to other member countries.

Nevertheless, Decision 486 grants the trademark owner certain prerogatives from which it can benefit in other Andean Community countries, other than the country in which its trademark is registered (or which registration has been applied for).

One of said prerogatives is the so-called “Andean Opposition”, by virtue of which the owner of a registered or applied-for trademark in a member country is legitimized to file opposition, based on said trademark, against applications for registration of trademarks filed in other member countries of the Andean Community.

It is an exception to the territoriality rule which governs in the Andean region, since the possibility of filing oppositions is not limited to the territory in which the trademark is registered or in which registration is pending, but it extends to all the member countries of the Andean Community.

Now then, unlike previous Decision 344, current Decision 486 establishes as requirement for acceptance of the Andean opposition, that the opponent proves its “real interest” in the market of the country in which the opposition is filed, by applying for the registration, in said country, of the same trademark on which its opposition finds support.

In this respect, the first paragraph of article 147 of Decision 486 literally establishes the following (underlining has been added):

“Article 147. For the purposes of the previous article, it shall be understood that both the owner of an identical or similar trademark for goods or services in respect of which the use of the other trademark would be likely to lead to confusion, and the person that first applied for registration of the trademark in any Member Country, have a legitimate right to file objections in the other Member Countries. In either case, such opponents shall demonstrate real interest in operating in the market of the Member Country where they are filing an opposition by applying for registration of the trademark at the time they file their opposition.

[…]”

Thus, to demonstrate real interest in an Andean opposition, the rule establishes that, at the time of filing the opposition, the opponent also applies for the registration of its trademark in the same country.

In this respect, some considerations about certain aspects that must be taken into consideration for demonstrating real interest:

1.    Real interest can be demonstrated with an application for registration or with a trademark already registered in the same county in which the opposition is filed.

It is worth mentioning that Decision 486 refers to the filing of an application and not the existence of an already registered trademark in the country in which the Andean opposition is filed. This can be due, maybe, to the fact that for the Andean legislator the reason of this concept was to make possible the oppositions in those cases in which a previously registered or applied for trademark in other Andean Community country is not registered in the same country in which the opposition is filed.

In this regard, the Division Specialized in Intellectual Property of the Court  has stated in case law the following: “In this sense, the purpose of the Andean opposition is to make possible that a third party not having a trademark registered or applied for in the country in which the registration is applied for, can file opposition” (Resolution No. 0736-2022/TPI-INDECOPI of May 27, 2022, issued in connection with Case File No. 876963-2020).

Nevertheless, in practice, both first and second administrative instances consider real interest as demonstrated in Andean oppositions with trademarks registered in the same country of the opposition.

The Division specialized in Intellectual Property of the Court of INDECOPI has expressly established the above mentioned in the precedent of mandatory compliance issued in Resolution No. 458-2020/TPI-INDECOPI of June 17, 2020, corresponding to Case File No. 784139-2019.

Section Four of the resolution part of said decision establishes the following (underlining has been added):

 “Four. To establish that this Resolution constitutes Precedent of Mandatory Compliance with respect to the criterion that must be taken into consideration when an Andean opposition is prosecuted, based on a registered trademark in one of the Member Countries of the Andean Community, which owner has the trademark also registered in Peru prior to the application it opposes and that has been used to demonstrate real interest in the Peruvian market, in the terms indicated below: Article 147 of Decision 486 refers to the case in which real interest is demonstrated by an application for registration; nevertheless, it is possible to demonstrate said interest with a trademark registration already granted in the Member Country in which the opposition if filed. In this sense, if the opponent’s trademark registered in one of the Member Countries has been applied for or is registered in Peru, its real interest in the Peruvian market becomes completely demonstrated, for which reason the Andean opposition must be considered as validly filed and it must be treated according to law.”

 

2.    The demonstration of real interest in an Andean opposition constitutes a requirement for the admissibility of the opposition.

This has been established by the Division Specialized in Intellectual Property of the Court of INDECOPI in the precedent of mandatory compliance abovementioned, when stating the following (the underlining has been added):

“It is worth mentioning that, according to the cited provision, the demonstration of real interest in an Andean opposition will be assessed at the time of its filing, that is, at the stage in which the Authority examines its admissibility, reason why the outcome of the application for registration filed or the trademark registration whereby said interest has been demonstrated is not relevant when determining if the Andean opposition shall be admitted or not, thereby not being possible to request additional requirements other than those set forth in the provision.”  

3.    We can conclude from the above-mentioned that the subsequent outcome of the application filed or of the trademark registration invoked to demonstrate real interest turns out irrelevant for purposes of admissibility of the Andean opposition.

The Division Specialized in Intellectual Property has established the following (Resolution No. 1572-2021/TPI-INDECOPI of November 29, 2021, issued in Case File No. 401245-2009):

“In that respect, according to article 147 of Decision 486, the demonstration of real interest in an Andean opposition will be assessed at the moment of its filing, that is, at the moment in which the Authority examines its admissibility, reason why the outcome of the application for registration filed or of the trademark registration whereby said interest is demonstrated, is not relevant when determining if the Andean opposition shall be admitted or not.”

4.    The mark applied for registration or registered trademark whereby real interest is intended to be demonstrated, shall be identical to the trademark basis of the opposition. 

Concerning this matter, it is worth mentioning the pertinent whereas clauses of Resolution No. 1639-2013/TPI-INDECOPI, issued by the Division Specialized in Intellectual Property of the Court, in connection with Case File No. 450663-2013, in which an Andean opposition is rejected since the applied-for mark was not identical to the trademark basis of the Andean opposition (the underlining has been added):

“[…]

In that respect, article 147 Decision 486 establishes that the opponent shall demonstrate its real interest in operating in the market of the Member Country where it is filing an opposition by applying for registration of the trademark at the time it files its opposition.

On this matter, the Court specifies that according to the referred article, the opponent shall apply for the registration of the Andean trademark basis of its opposition in the country where the opposition is filed, said article not protecting the application for registration of similar marks or variations of the trademark basis of the opposition. 

In that sense, it is noticed that the company Vestiditos S.A. is not legitimized to file opposition against the instant application for registration based on its registered trademark in Ecuador M & C in class 25 of the Official Nomenclature, since said trademark differs from the mark applied for registration in Peru, in order to demonstrate its real interest, given that the applied-for mark presents figurative elements whereas the referred trademark is a wordmark.

Consequently, the Court believes that in the instant case, the opposition filed by Vestiditos S.A., is inadmissible, so it does not correspond to determine whether likelihood of confusion exists between the trademark registered in Ecuador and the applied-for mark in the instance case file. 

[…].”

5.    The mark applied for registration or registered trademark whereby the opponent intends to demonstrate its real interest, shall distinguish goods/services identical to or, at least, overlapping those distinguished by the trademark basis of the opposition.

If the domestic application or registration that demonstrates the opponent’s real interest fails to include all the goods/services of the trademark basis of the Andean opposition, but only includes some of them, the trademark authority will consider that real interest is demonstrated only for said goods, and therefore, the risk of confusion analysis will be made only considering the goods/services of the Andean trademark which are included in the domestic application or registration intending to satisfy the real interest requirement.

The Andean opposition is, undoubtedly, a wise move of our Andean legislation with a view to achieving in the future, for now distant, the existence of an Andean Community Trademark System.