Trademark Law considers several legal concepts, such as the preferential right derived from a trademark cancellation and the real interest resulting from an Andean opposition.
Thus, the preferential right for the registration of a trademark is a right that allows whoever obtains the cancellation of a trademark registration, to apply for its registration invoking said right as from the filing of the cancellation action, and until three months following the date on which the cancellation decision becomes final in the administrative proceedings, as established in Article 168 of Decision 486.
On the other hand, the real interest derived from an Andean opposition is the person’s intention of participating in the market of the country in which said person defends the trademark rights it was granted in another Andean Community member country, seeking protection in Article 147 of Decision 486.
In this order of ideas, it is very clear that they are legal concepts totally different, but that given the circumstances, they can become related.
In fact, the Andean Community Court of Justice, by Prejudicial Interpretation No. 217-IP-2018, dated December 13, 2019, issued opinion about the prevalence between the preferential right derived from a trademark cancellation and the real interest derived from an Andean opposition, in the following terms:
“If the Andean opposition bases on a right prior to the right of the trademark registration which cancellation is requested, it is evident that the Andean opposition prevails over the preferential right derived from the cancellation action, as explained in the following example.
Let us assume that Ticio registered in the Colombian Trademark Office trademark “X” in 2005. Later, in 2010, Lucio registers in the Ecuador Trademark Office trademark “X1” which is identical or similar to trademark “X” of Ticio. It results that Ticio did not learn about the registration of trademark “X1” in Ecuador (if Ticio would have known of the application for registration of trademark “X1” filed by Lucio in Ecuador, Ticio could have opposed by virtue of the concept of the Andean opposition established in Article 147 of Decision 486). Lucio uses trademark “X1” only two years, until 2012, and stops using it as from January 2013. On January 16 2017, Mario requests the Ecuador Trademark Office to cancel the registration of trademark “X1”. Said office issued a favorable decision in favor of Mario’s cancellation petition, by means of final administrative act of June 30, 2017. By virtue of the preferential right established in Article 168 of Decision 486, Mario has preferential right to the registration of trademark “X1”, which can be invoked from the filing date of the cancellation petition (January 16, 2017) and until three months following the date in which the cancellation resolution became firm in the administrative proceedings (June 30, 2017).
Now let us assume that, on the basis of the preferential right, Mario applies for the registration of trademark “X1”, before the Ecuador Trademark Office, on August 15, 2017 (within the three months granted by the preferential right), but this time Ticio does become aware of said application for registration. Since the mark “X1” is identical or similar to Ticio’s trademark “X” registered at the Colombia Trademark Office, and given that this registration (year 2005) is prior to the registration that Lucio was granted (year 2010), Ticio can oppose the application for trademark registration filed by Mario on August 15, 2017, in which case Ticio must file the application for registration of trademark “X” with the Ecuador Trademark Office at the time of filing its Andean opposition.”
In this way, the prevalence between the right derived from a cancellation action and the real interest derived from an Andean opposition will be subject to what was determined by the Court of Justice of the Andean Community, and, it is worth mentioning that the exercise of the preferential right does not exempt the Authority from evaluating the registrability of the sign which registration is sought.