Types of infringement regulated in Decision 486

Published byBarreda Moller

The Andean Court has recently specified, through the Prejudicial Interpretation issued in connection with Proceeding 251-IP-2018, the scope of four acts established in Article 155 of Decision 486.  Said acts make reference to infringements against registered marks, specifically, those established in paragraphs a), b), c) and d) of the mentioned article.

Although the reading of Article 155 allows to clearly appreciate the acts it regulates, it is of the utmost importance to notice a few points made by the Andean Court regarding some terms included in the mentioned article, as well as the delimitation made regarding said acts and the determination, in paragraphs a) and b), of the passive and active subjects.

Thus, for example, the Andean Court, regarding the act described in paragraph a), specifies the three cases that would qualify as an infringement under this rule, and states, in turn, who would be the active and passive subjects in each scenario, according to the following chart:

 

 
Active subject
Passive subject
Summary of the case
Case I
Owner of a mark that distinguishes goods
Uses or affixes the mark or identical or similar sign directly on the goods
Used or affixed protected mark for goods against an identical or similar mark or sign on goods
Case II
Owner of a mark that distinguishes services
Uses or affixes the mark or identical or similar sign on goods related to the services distinguished by the protected mark
Used or affixed protected mark against an identical or similar mark or sign on goods related to the services distinguished by  the mark
Case III
Owner of a mark that distinguishes goods or services
Uses or affixes the mark or identical or similar sign on containers, wrappers, packaging or means of presentation of the goods
Used or affixed protected mark for goods or services against an identical or similar sign on containers, wrappers, packaging or means of presentation of the goods


The Andean Court further specifies what “means of presentation” shall mean, stating that it is the way in which the products are packed, transported, guaranteed, protected or exhibited for their sale or the way of arranging or preparing a product for its commercialization.  Notwithstanding the abovementioned, the Andean Court makes clear that the concept “means of presentation” constitutes a broad term, which comprises different meanings, reason why the Andean  Court gives the following example: “(…) through supermarket shelves, counters, shop windows, or any other means allowing to show the products to consumers at the points of sale.”

Moreover, the Andean Court states that although the infringement is perpetrated through the improper use in commerce, being that the act of using or affixing a similar or identical sign to the registered mark on identical or similar products can constitute a mere preparatory act, the rule intends to grant the broadest coverage to the mark protection, without being necessary that the infringer obtains economic benefit for its illicit act.

With respect to paragraph b), the Andean Court considers that said act constitutes a fraudulent act which affects the exclusive right in the trademark and also affects the consumer. In this act, just like the act described in paragraph a), the Andean Court establishes three cases that can be classified in the described behavior, determining in turn the active and passive subjects in each case, according to the following table:

 

 
Active subject
Passive subject
Summary of the case
Case I
Owner of a mark that distinguishes goods
Removes or alters the mark after the identical or similar mark or sign has been used or affixed directly on goods
Protected mark for removals or alterations after  it has been used or affixed against an identical or similar mark or sign on goods
Case II
Owner of a mark that distinguishes services
Removes or alters the mark after the identical or similar mark or sign has been used or affixed  on goods related to the services distinguished by the protected mark
Protected mark for removals or alterations after it has been used or affixed against an identical or similar mark or sign on goods
Case III
Owner of a mark that distinguishes goods or services
Removes or alters the mark after the identical o similar mark or sign has been used or affixed on containers, wrappers, packaging or means of presentation of the goods
Protected mark for removals or alterations after it has been used or affixed against an identical or similar mark or sign on containers, wrappers, packaging or means of presentation of the goods

 

Moreover, regarding paragraph  c), we notice that the Prejudicial Interpretation specifies that said case does not require that the labels be affixed to the end product or that the containers hold said product, since the purpose of the rule is to safeguard the integrity of the mark, even from preparatory acts that seek to consolidate a major infringement.  Furthermore, it is indicated that the act established in paragraph c) results applicable only in case that the infringing sign is identical to the registered mark or the registered mark has been included in the infringing sign.

Finally, regarding paragraph d), the Prejudicial Interpretation emphasizes that for the materialization of this act it is required that the behavior constitutes a “use” (in its broadest definition),  is performed in commerce, taking into account the principle of specialty, and is capable of  generating risk of confusion or association.  Likewise, it is important to highlight the fact that risk of confusion shall be presumed if we find identical signs.