The “notorious” trademark and its exception to the specialty principle in the case of a cancellation action based on non-use

Published bySalome Urquiaga

Article 165 of Decision 486 establishes the legal concept of cancellation of the trademark registration, which operates when the trademark has not been object of a “real” and “effective” use in the market, in connection with the products or services for which it was granted.  

Nevertheless, special treatment deserves the trademark recognized as “notorious”, since by virtue of the special protection that Decision 486 confers it, and of a theological interpretation of Article 229, paragraph b) of said Andean law, said trademark cannot be object of non-use cancellation.  

As it is known, the “notorious” trademark not only breaks with the principles of “territoriality” and “registration” but also with the principle of “real” and “effective” use, which implies that it is not required that the trademark be used in the country where it is registered, being sufficient that its owner demonstrates that it is “notoriously” known in any of the member countries of the Andean Community to obtain protection, and based on its status, enforceable against any cancellation action. Moreover, it is worth mentioning that said protection includes not only the products or services for which the trademark was recognized as “notorious”, but also those similar or related products or services, and even other products comprised in the pertinent sector, since “notoriety” is protected beyond the “specialty principle.”

Regarding this last aspect, the Court Specialized in Intellectual Property has stated in its resolutions that the Court of Justice of the Andean Community has neither stated nor limited the protection that “notorious” trademarks received when faced with cancellation processes, according to the products or classes to which they belong, since the protection involves the risks of confusion/association and also includes the risk of dilution of their distinctive force. In keeping with said guidelines, the Court has determined that it does not correspond to cancel the registration of a trademark based on non-use, when the owner demonstrates its “notoriety” for products or services of a class different from the class in which the products or services protected by the registration which cancellation is requested are comprised. 

An illustrative case was followed under file No. 706814-2017/DSD, which was decided by virtue of Resolution No. 1321-2019/TPI-INDECOPI of August 21, 2019. In said case, the Court reversed Resolution No. 6560-2018/CSD-INDECOPI of December 14, 2018, and kept in force the registration of trademark TREBOL (Certificate No. 154988), under the exceptional protection given to trademark TREBOL and logotype, which “notoriety” was demonstrated by its owner for “sanitary apparatus in general, parts and accessories thereof” in class 11, products different from “adhesives and cements for the construction industry” in class 1, covered by the trademark registration which cancellation was sought. The extended protection scope of the “notorious” trademark TREBOL and logotype for products in class 11, beyond the specialty principle, was the legal ground for maintaining in force the registration of trademark TREBOL in relation to products belonging to class 1.

Concordant with the criterion applied in the commented resolution, the Court issued decision in a similar case prosecuted under file No. 777596-2020, in which by Resolution No. 002-2020/TPI-INDECOPI of January 6, 2020, declared the nullity of Resolution No. 2779-2019/CSD-INDECOPI issued on June 19, 2019, and returned the case to the First Instance in order that the Commission of Distinctive Signs issued a new decision with respect to the “notoriety” analysis of trademark TARJETA OH and logotype which cancellation based on non-use was requested, since in the previous analysis the “notoriety” was evaluated only with respect to the services of “advertising, business management, business administration, office functions” in class 35, covered by the registration object of cancellation, omitting to perform the analysis in relation to services of “promotion of insurance sales, processing of claims and consultations”, for which the owner invoked the “notoriety” of its trademark. The same criterion has been applied by the Court in analogous cases. 

The reiterated, uniform and consistent case law developed by the Intellectual Property Specialized Court in this matter, has indubitably established that the extended protection of the “notorious” trademark exceeds the limits of the specialty principle when invoked as means of defense in a cancellation action based on non-use, protection which is materialized in the protection of the attacked registration, which effectiveness will be maintained for the products of services it covers, even if they are different from those for which notoriety was proven.