Notoriety of a trademark can be alleged and declared at present when its registration is applied for within the andean community

Pursuant to Article 224 of Decision 486 of the Andean Community, we must interpret that a notoriously known distinctive mark is the one that has been recognized as such in any county of the Andean Community by the pertinent sector.  In that sense, we must interpret that the notorious trademark is known and recognized as such by a large part of consumers in relation to the products and/or services for which it is used.

The Court of Justice of the Andean Community has repeatedly indicated in several decisions the concept of notorious trademark, stating that it must be understood as: “a trademark known by a group of individuals belonging to a certain group of consumers or users of the type of products or services to which it is applicable since the trademark is largely widespread within said group.” (Proceedings 6-IP-2009, interpretation of Article 136, paragraph h) of Decision 486 of the Cartagena Agreement Community and ex officio of Articles 134, 136 paragraph a), 224, 225, 226 and 228 thereof, decision dated March 13, 2009, published in the Official Gazette of the Cartagena Agreement  Nº127, dated June 30, 2009, pages 37, 52).

It is important to highlight that the recognition of notoriety of a trademark seeks to protect it from the risks to which highly distinctive marks are exposed: risk of association, confusion, dilution of distinctive force and, specially, from the parasitic use that could eventually arise or appear in the market.  With respect to the risk of confusion and association, what is sought is to prevent that consumers incur in the error of asking for certain products or services thinking that they are acquiring those that are identified by the notoriously known mark or, that induced by the identity or similarity of the trademarks, wrongly interpret that the products or services have the same business origin.  Moreover, the risk of dilution protects the notoriously known mark from any use of other identical or similar trademarks that can reduce or weaken their extraordinary distinctive force.  Finally, protection of the risk of parasitic use intends to prevent that any third party, alien to the owner of the notorious trademark, illegitimately takes advantage of the high prestige that the notoriously known trademark has obtained in a certain market.

Within the framework of the Andean Legislation, the declaration of notoriety of a trademark must be requested through an administrative procedure, as traditionally made when invoking it as basis in an opposition against the registration of a trademark identical or similar to the notorious trademark or, in the nullity action of a registered trademark, on the basis of the notoriety of a plaintiff’s mark.  Subsequently, according to several decisions issued by the Court of Justice of the Andean Community, it was also accepted that the recognition of notoriety of a trademark be declared in non-use cancellations proceedings, provided said special status of the trademark on which the cancellation is based, has been alleged at the proper time as way of defense by the owner of the objected mark, to prevent the declaration of cancellation of a notorious mark and the subsequent unlawful and parasitic use of said mark by third parties.

Moreover, it is important to mention that our trademark authorities repeatedly ruled out the possibility of declaring the notoriety of a mark in the process of its registration, if an opposition against the registration of said mark was filed or when said mark was denied ex officio. As example of the abovementioned, we would like to cite Resolution Nº 0635-2014/TPI-INDECOPI, issued in connection with file Nº 524631-2013, regarding application for registration of trademark L.A. COLORS to identify products in class 03 of the Official Nomenclature, in which the following was stated:

“In this regard, it is necessary to specify that in a process of trademark registration as the instant one, it does not correspond to evaluate if the applicant’s mark is notoriously known or not.  Said argument can be invoked only in a process of this nature, pursuant to Article 136, paragraph h) of Decision 486, by who opposes a registration on the basis of its own trademark and not by the applicant, as occurs with the appellant in this case.”

Nevertheless, pursuant to the new criteria established by the Court a Justice of the Andean Community, chances of obtaining the recognition of notoriety of a trademark are increased, since said Court has declared that the notoriety of a trademark must be also considered in processes in which its registration is applied for. In particular, we would like to cite the interpretation issued by the Court of Justice of the Andean Community in Proceedings Nº 108-IP-2014, in which the following is stated:

“Decision 486 of the Andean Community Commission protects a non-registered trademark and, in consequence, the registrability examination of a notoriously known mark should be different from the examination of an ordinary mark.  This does not mean that a notorious trademark has inevitably right to its registration, since the registration of any trademark, even in the case of notorious trademarks, must be consequence of the respective registrability analysis made by the competent national office.”

Said analysis should be differential and complex, that is, it must be performed bearing in mind the fact that the notorious trademark is already distinctive and, therefore, the confusability analysis must be, on the one hand, more benevolent taking into consideration the great prestige gained by the notoriously known trademark and, on the other hand, very rigorous to prevent consumer confusion, taking into consideration the characteristics of the opponent’s trademark, that is, taking into consideration factors such as the notoriety of the opponent’s trademark, the class of the product which registration is sought, etc.

Regarding the differential treatment that the registration of a notoriously known trademark must be given, professor Jorge Otamendi states the following:

“By contrast, the criterion is not the same when the applied-for mark is notorious since notoriety is considered a distinction factor.  In these cases, the criterion can be more benevolent since the possibilities of confusion are more remote.

 In accordance with the abovementioned, although community law grants certain effects to the notorious trademark that is not registered in the Member Country where its protection is requested, the registrability analysis in case said trademark is applied for registration is independent, that is, it is at the discretion of the Competent National Office, prior registrability analysis, to grant or not the registration of the alleged notoriously known trademark, according to the multiple factors that can take part in said study.” (Highlighting has been added.)

Consequently, according to said interpretation, the notoriety of a trademark must also be evaluated and considered when its registration is applied for, if the notoriety of said mark is invoked.  In this case, if the notoriety recognition is granted, the distinctiveness analysis of said mark is no longer necessary and the confusion analysis must be more benevolent.

Finally, the trademark authorities of our country are currently obliged to take into consideration the abovementioned and, following the Andean Court criterion, must necessarily evaluate, and eventually recognize, the notorious character of a mark when said special quality is invoked in a process of registration of said mark.