Binding nature of the declaration of “notoriety” of a trademark in one of the member countries of the Andean Community

Published byBarreda Moller

Decision 486 establishes in Article 224 that notoriously known distinctive sign shall mean the sign that is recognized as such in any member country, by the pertinent sector, regardless the way or means by which it has become known.

In this regard, the fact that a trademark has gained notoriety in one of the member countries of the Andean Community (Bolivia, Colombia, Ecuador and Peru) and that said status has been recognized by the competent National Authority, grants said trademark an exceptional protection that goes beyond the territory in which the notoriety has been declared, thereby extending its effects to the other member countries of the Andean Community of Nations in which the recognition of said status be then invoked.

It has to do with a binding effect generated as from the date Decision 486 came into force, since with Decision 344 the decisions issued by a member country, recognizing the notoriety of a trademark, were just referential and ought to be evaluated as one more piece of proof within a set of offered means of proof.
The Administrative Court has specified in its decisions that, not being the only possible evidence, the best way to demonstrate that a trademark is recognized as “notorious” by the pertinent sector, is the decision issued by the Industrial Property Competent National Authority or the Judiciary, as a result of an administrative and/or judicial proceeding that declares it so.

In this respect, it is worth mentioning that when the period of recognition of the notoriety in another country of the Andean Community of Nations is recent, validation is granted without the need of any further evidence. Nevertheless, such prerogative is not unrestricted, being noticed from the casuistry of the Administrative Court that, if more than 2 years have passed, it will be necessary the submission of evidence or any piece of circumstantial proof which demonstrates that the factual and legal situations that determined the recognition of the notoriety of the trademark have not varied, in order to keep the notoriety recognition.

In view of the complex phenomenon of proving the notorious character of a sign, the advantage of having the possibility of enforcing a declaration of notoriety issued by the competent Trademark Authority of one of the countries of the Andean Community, thus extending the protection to the other member countries, constitutes a legal instrument and an ideal means of proof to obtain said recognition when the same is invoked.