OAS

ANDEAN COMMUNITY

DECISION 486: Common Intellectual Property Regime


(Continuation)

CHAPTER II
On the Registration Procedure

Article 138 .- The application for registration of a trademark shall be filed with the competent national office. It shall cover a single category of goods or services and shall meet the following requirements:

a) the petition;

b) a reproduction of the trademark where it is a denomination containing graphic elements, shape, or color, or a figurative, mixed or three-dimensional trademark with or without the use of color;

c) such powers of attorney as may be needed;

d) proof of payment of the prescribed fees;

e) the authorizations required for the cases stipulated in articles 135 and 136, where applicable; and

f) the certificate of registration in the country of origin issued by the granting authority and, if so stipulated in domestic legislation, the receipt for payment of the prescribed fee, should applicants wish to avail themselves of the right provided for in Article 6 quinquies of the Paris Convention.

Article 139. - The petition for registration of the trademark application shall be a form and shall include the following information:

a) the request for registration of a trademark;

b) the name and address of the applicant;

c) the nationality or address of the applicant and, should the applicant be a legal entity, the place of incorporation;

d) the name and address of the applicant�s legal representative, if pertinent;

e) a statement of the trademark to be registered, where such trademark is denominative only, without graphics, shape or color;

f) a list of the specific goods or services for which the trademark registration application is being filed;

g) a statement of the category to which the products or services correspond; and,

h) the signature of the applicant or the applicant�s legal representative.

Article 140 .- The date of its receipt by the competent national office shall be considered the application filing date, provided that the application contained at least the following elements:

a) a statement that the applicant is filing for registration of a trademark;

b) data that shall permit identification of the applicant or person filing the application or enable the competent national office to communicate with that person;

c) the trademark for which registration is being applied for, or a reproduction of the trademark in the case of trademarks that are denominations with special graphic elements, shapes or colors, or of figurative, mixed or three-dimensional trademarks, whether in color or not;

d) a list of the specific goods or services in respect to which the trademark protection is being applied for; and,

e) proof of payment of the prescribed fees.

Failure of to provide any of the requirements listed in this article shall cause the competent national office to reject the application for processing and no filing date shall be assigned to it.

Article 141 .- An applicant may claim as the filing date of an application for registration of a trademark the date that the trademark was used to distinguish goods or services at an officially recognized exhibition held in any country when applied for within six months following the date on which the said goods or services were first exhibited under that trademark. In that case, the application may be considered filed as from the date of the exhibition.

The acts referred to in this article shall be certified by the competent authority responsible for the exhibition, which shall state the date on which the trademark was first used in connection with the goods or services in question.

Article 142 .- An applicant wishing to invoke the right provided for in Article 6 quinquies of the Paris Convention for the Protection of Industrial Property shall submit the certificate of trademark registration in the country of origin within a period of three months after the application filing date.

Article 143. - Applicants for registration of a trademark may ask to modify their applications at any time during their processing or to correct any material mistakes.

The competent national office may, at any stage of the processing, suggest that applicants make changes in their applications. The said proposal of amendment shall be processed in accordance with the provisions of article 144.

In no case may the application be amended by making important changes in the trademark or adding to the products or services initially specified.

Fees may be prescribed for the amendment application, if domestic legislation so provides.

Article 144. - The competent national office shall, within 15 days following filing, conduct an examination to determine whether the application complies with the conditions of form specified in articles 135 and 136.

Should the examination reveal that the application does not comply with the conditions of form specified in the preceding paragraph, the competent national office shall request that the applicant to remedy those defects within a period of sixty days following notification.

If the applicant fails to fulfill the requirements by the end of the stipulated term, the application shall be rejected and shall lose its position within the order of priority.

Article 145. - If the application meets the formal conditions of form laid down in this Chapter, the competent national office shall order its publication.

Article 146. - Within thirty days following such publication, any person having a legitimate interest may, one time only, file a valid objection that could result in invalidation of the trademark registration.

The competent national office may, at the request of a party and once only, grant an additional thirty-day period in which to provide valid reasons for opposing registration of the trademark.

Reckless objections may be sanctioned if provided for by domestic legislation.

No objections based on such trademarks as may have existed at the same time as that being applied for, may be lodged against the application within six months following expiry of the grace period referred to in article 153.

Article 147. - For the purposes of the previous article, it shall be understood that both the owner of an identical or similar trademark, for goods or services in respect of which use of the other trademark would be likely to lead to confusion, and the person that first applied for registration of the trademark in any Member Country, have a legitimate interest in lodging objections in the other Member Countries. In either case, such opponents shall demonstrate real interest in operating in the market of the Member Country where they are filing an objection by applying for registration of the trademark at the moment they express their opposition.

If an objection is lodged on the basis of a trademark previously registered in any Member Country under the provisions of this article, the competent national office shall have the authority to deny registry of the second trademark.

The filing of an objection based on an application for trademark registration previously filed in any Member Country under the provisions of this article shall result in the suspension of the registration of the second trademark until such time as the registration of the first has been conferred. In that event, the stipulations of the previous paragraph shall be applicable.

Article 148. - The competent national office shall, in the event of any opposition having been presented, request applicants to submit such arguments and evidence as they deem fit within thirty days following that notification.

The competent national office shall, at the request of one of the parties, grant for one time only a period of thirty additional days in which to provide valid reasons for the refutation.

Article 149. - The competent national office shall not accept for consideration such objections as:

a) are lodged without an indication being given of the essential data identifying the opponent and the application against which the objection is being filed;

b) are lodged after the deadlines have lapsed;

c) have not paid the prescribed processing fees.

Article 150. - At the expiration of the period stipulated in article 148, or if no objections have been filed, the competent national office shall proceed to conduct the examination of registrability. Should any opposition have been presented, the competent national office shall rule on those objections and on the grant or refusal of registration of the trademark and inform the parties of its decision.

Article 151 .- Member Countries shall use the International Classification of Goods and Services for the Purposes of the Registration of Marks established by the Nice Agreement of June 15, 197 and its effective amendments to classify the goods and products to which the trademarks shall be applied.

The categories of the International Classification named in the previous paragraph into which those goods and services are classified shall not be used to determine whether the expressly listed products or services are similar or different.

CHAPTER III
On the Rights and Limitations conferred by the Trademark

Article 152. - Registration of a trademark shall be for a term of ten years counted from the grant date and may be renewed for successive ten-year periods.

Article 153.- The owner of a registered trademark or any party with a legitimate interest shall apply to the competent national office for its renewal within six months before expiry of its registration. Notwithstanding the foregoing stipulation, both the owner of the registered trademark and any party having a legitimate interest shall be given a grace period of six months following the date of expiration of the registration in which to apply for renewal. Such persons shall accordingly attach receipts for payment of the prescribed fees and shall, at the same time, pay any such surcharge as the domestic legislation of the Member Countries may prescribe. The registered trademark shall retain its full validity over that period.

Renewal shall not require proof of trademark use and shall be granted automatically on the same terms as the original registration. The owner of the registered trademark may, however, reduce or limit the goods or services listed in the original registration.

Article 154 .- Registration of a trademark with the competent national office shall confer the exclusive right to its use.

Article 155. - The owner of a registered trademark shall have the exclusive right to prevent all third parties not having the owner�s consent from engaging in the following acts:

a) using or affixing the trademark or a similar or identical distinguishing sign to products in respect of which the trademark is registered; to products connected with the services for which the trademark is registered; or to the packages, wrappings, packing, or outfittings of those products;

b) removing or changing the trademark, once it has been placed on or affixed to the products in respect of which the trademark is registered, for commercial purposes; to products connected with the services for which it is registered; or to the packages, wrappings, packing, or outfitting of those products;

c) manufacturing labels, packages, wrappings, packing, or such other materials as may reproduce or contain the trademark, and selling or storing such materials;

d) using, in the course of trade, identical or similar signs to the trademark for goods or services, where such use would result in a likelihood of confusion or mistaken association with the registration owner. In the case of the use of an identical sign for identical goods or services, a likelihood of confusion shall be presumed;

e) using in the course of trade identical or similar signs to a well-known trademark with respect to any goods or services, where such use, by weakening the distinctive force or the value of that trademark for commercial or advertising purposes or by taking unfair advantage of the prestige of the trademark or of its owner, could unjustly damage the registration owner�s economic or commercial interests;

f) making public use of identical or similar signs to a well-known trademark, even for purposes that are non-commercial, where such use could weaken the distinctive force or value of that trademark for commercial or advertising purposes or take unfair advantage of its prestige.

Article 156. - For the purposes of the provisions stipulated under paragraphs e) and f) of the previous article, the following acts, among others, shall constitute use of a trademark by a third party in the course of trade:

a) introducing into commerce, selling, offering for sale, or distributing products or services that bear the said trademark;

b) importing, exporting, storing, or transporting products that bear the said trademark; or,

c) using the said trademark, independently of the means of communication employed and without prejudice to such standards as may be applicable to advertising, in advertising, publications, commercial documents, or written or oral communication.

Article 157. - Provided that it is done in good faith and does not constitute use as a trademark, third parties may, without the consent of the owner of the registered trademark, make use in the market of their own names, addresses, or pseudonyms, a geographical name, or any other precise indication concerning the kind, quality, amount, purpose, value, place of origin or time of production of their goods or of the rendering of their services, or other characteristics thereof, provided that such use is confined to identification or information purposes only and is not likely to create confusion over the source of the goods or services.

Trademark registration shall not confer on the owner the right to prevent a third party, where proceeding in good faith, from using the trademark to announce, even in advertising using brand comparisons, offer for sale, or advertise the existence or availability of lawfully trademarked goods or services, or from advertising the compatibility or suitability of spare parts or accessories that may be used with goods bearing the registered trademark, provided that such use is confined to the purpose of informing the public and is unlikely to lead to confusion over the corporate origin or the goods or services concerned.

Article 158. - Trademark registration shall not confer on the owner the rights to prevent third parties from engaging in trade in a product protected by registration once the owner of the registered trademark or another party with the consent of or economic ties to that owner has introduced that product into the trade of any country, in particular where any such products, packaging or packing as may have been in direct contact with the product concerned have not undergone any change, alteration, or deterioration.

For the purposes of the preceding paragraph, two persons shall be considered to have economic ties when one of the persons is able to exercise a decisive influence over the other, either directly or indirectly, with respect to use of the trademark right or when a third party is able to exert that influence over both persons.

Article 159 .- Where registrations of an identical or similar mark exist in the Subregion in the name of different owners for the identification of the same goods or services, the marketing of the goods or services identified with that mark in the territory of the Member Country concerned shall be prohibited, except where the owners of the said marks enter into agreements allowing such marketing.

In the event of such agreements having been entered into, the parties shall take the necessary precautions to avoid misleading the public as to the origin of the goods or services concerned, which shall include matters relating to the identification of the origin of the goods or services in question in appropriate and prominent characters for the proper information of the consuming public. The said agreements shall be registered with the competent national offices and shall conform to the standards governing business practices and the promotion of competition.

In any event, the importation of a product or service that is in the situation described in the first paragraph of this Article shall not be prohibited where the mark is not being used on the territory of the importing country, as provided in the first paragraph of Article 166, except where the owner of the said mark satisfies the competent national office that the non-use of the mark is justified by legitimate factors.

Article 160. - Where the trademark consists of a geographical name, the product may not be marketed without bearing visible and clearly legible identification of its place of manufacture.

CHAPTER IV
On the Licensing and Assignment of Trademarks

Article 161. - A trademark that is registered or for which registration has been filed shall may be assigned or to transfered by succession that trademark, with or without the business to which it belongs.

Any assignment or transfer of a trademark registration shall be filed with the competent national office. Failure to register shall render the assignment or transfer invalid with respect to third parties.

An assignment or transfer, in order to be registered, shall be in writing.

Any interested party may file for registration of an assignment or transfer. The competent national office may deny that registration, if the transfer is likely to cause confusion.

Article 162. - The owner of a trademark that is registered or being filed for may license one or more parties to use the trademark in question.

Any license that is granted for use of a trademark shall be registered with the competent national office. Failure to register shall render the license invalid with respect to third parties.

The license, in order to be registered, shall be made in writing.

Any interested party may request the registration of a license.

Article 163. - The competent national authority shall not register any trademark licensing agreements or assignments or transfers that do not conform to the provisions of the Common Regime for the Treatment of Foreign Capital and for Trademarks, Patents, Licenses, and Royalties, or that do not conform to Andean Community or domestic untitrust.

Article 164. - The owner of the registered trademark shall report to the competent national office, during the license�s period of effectiveness, any change in the name or address of the registered trademark owner. Otherwise any notification that is made using the data entered in the registration.

CHAPTER V
On the Cancellation of Registration

Article 165. - The competent national office shall, at the request of an interested party, cancel a trademark registration after an uninterrupted period of non-use in any Member Country, without valid reasons, by the owner, a licensee, or another person authorized by the owner, of at least three years immediately before the start of the cancellation proceeding. Cancellation of a registration for non-use of trademark rights may also be requested as a defense in an opposition proceeding lodged on the basis of the unused trademark.

Without prejudice to the stipulation of the previous paragraph, no cancellation proceeding shall be initinted until three years after the date of notification of the final resolution within the administrative registration procedures relating to the�..

Where non-use of a trademark affects only one or several of the goods or services in respect of which it was registered, an order shall be given to shorten or limit the list of products or services originally included in the trademark registration in order to remove those goods and services in respect of which the trademark has not been used; the identity or similarity of the goods or services shall be taken into consideration for this purpose.

Registration may not be cancelled where the owner of the trademark is able to show that non-use is due to force majeure or an Act of God, among other things.

Article 166. - A trademark shall be considered in use where the goods or services distinguished by it have been placed in circulation or are available on the market under that trademark, in the form and amounts that are normal, due account being taken of the nature of the goods or services and the methods used for their marketing.

A trademark shall also be considered in use if it distinguishes only goods that are intended for exportation from any of the Member Countries, as stipulated in the previent paragraph. .

Use of a trademark in a form different from that in which it was registered only with respect to details or features that do not alter its distinctive character shall not constitute grounds for cancellation of registration for non-use, or lessen the protection afforded to the trademark.

Article 167. - The burden of proof of trademark use shall rest with the owner of the registration.

Commercial invoices, accounting documents, or auditing certificates, that demonstrate the regular nature and amount of trade that exists in the goods identified by the trademark may be employed to prove trademark use, among others.

Article 168. - The person who obtains a favorable ruling shall have the preferential right to registration.This right may invoked at the filing time of the request for cancellation or within three months following the effective date of the decision that ended the administrative procedure for trademark cancellation.

Article 169 .- Where the owner of the trademark has caused or allowed that trademark to become a common or generic sign to identify or denote one or several or the goods or services for which it was registered, the competent national office shall order, ex officio or at the request of a party, the cancellation of the trademark or the limitation of its scope.

A trademark shall be considered to have become a common or generic sign if, in commercial circles and for the public, it has lost its distinctive character as an indication of the corporate source of the product or service to which it is applied. In order for this to occur, the following elements shall exist in relation to the trademark:

a) the need of competitors, given the absence of any other appropriate name or sign for designating or identifying in their trade the good or service in question, to use the sign to carry out their business activities;

b) widespread use of the trademark by the general public and among commercial circles as the common or generic indication of the good or service in question; and

c) ignorance or limited knowledge by the public that the trademark denotes a specific corporate origin.

Article 170. - On receipt of petitions to cancel registrations, the competent national office shall request the owners of the trademarks in question to assert their arguments and submit the proof they deem fit within sixty working days counted from the date of notification.

At the expiration of the period stipulated in this article, the competent national office shall proceed to decide whether or not to cancel the trademark registration and shall inform the parties of its decision through a resolution.

CHAPTER VI
On the Renunciation of Registration

Article 171. - Owners of a registration may at any time renounce their rights to the registration.

Where renunciation is partial, the cancellation of the registration shall relate only to those goods or services that the owner has renounced.

Renunciation shall not be permitted where there are encumbrances or real guaranty rights that are registered with the competent national office, unless the owners of those rights have given their express consent to such renunciation.

Renunciation of a trademark shall become effective only when registration of the renunciation with the competent national office has taken place.

CHAPTER VII
On the Invalidation of Registration

Article 172 .- The competent national authority shall, either ex officio or at the request of a party, and at any time, declare the registration of a trademark absolutely null and void where it has been granted in contravention of the provisions of articles 134, paragraph one, and 135.

The competent national authority shall,, either ex officio or at the request of a party, declare the relative invalidation of a trademark registration where granted in contravention of the provisions of article 136 or obtained in bad faith. This action will lapse five years following the grant date of the contested registration.

The above-cited actions shall in no way affect such actions as may be brought for damages under domestic law.

A registered trademark may not be declared null and void on grounds that have ceased to be applicable at the time of the proceeding for invalidation.

When grounds for invalidation are applicable only to one or some of the goods or services for which the trademark was registered, invalidation shall be pronounced only in respect of those goods or services, and they shall be removed from the trademark registration.

Article 173 .- The provisions of article 78 shall be applicable to this Chapter.

CHAPTER VIII
On the Lapsing of Registration

Article 174. - Registration of a trademark shall lapse by operation of law where the owner or the person having a legitimate interest does not request renewal within the legal time limit, including the period of grace, as provided for in this Decision.

Failure to pay fees under the terms stipulated by the domestic legislation of the Member Country shall likewise be grounds for lapse.

PART VII
ON ADVERTISING SLOGANS Index

Article 175. - Member Countries may register advertising slogans as trademarks in conformity with the respective domestic legislation.

An advertising slogan is understood to mean the word, phrase, or caption used to complement a trademark.

Article 176. - The application for registration of an advertising slogan shall specify the filed for or registered trademark with which it shall be used.

Article 177. - Advertising slogans that contain references to similar products or trademarks to expressions that may be damaging to such products or trademarks may not be registered.

Article 178. - An advertising slogan shall be assigned or transferred together with its associated trademark and its validity shall be subject to that of the trademark.

Article 179. - The relevant provisions of the Title on Trademarks of this Decision shall be applicable to this Title

Title VIII
ON COLLECTIVE TRADEMARKS Index

Article 180. - A collective trademark shall be understood to be any sign that serves to distinguish the origin or any other characteristic common to goods or services from different businesses that use the sign under the owner�s control.

Article 181. - Legally established associations of producers, manufacturers, service providers, organizations, or groups of persons may apply for the registration of a collective trademark in order to distinguish in the market the goods or services of their members .

Article 182. - An application for registration shall specify that it is for a collective trademark, and shall be accompanied by:

a) a copy of the articles of association of the organization, association, or group of persons applying for registration of the collective trademark;

b) the membership list; and,

c) a statement of the conditions on and form in which the collective trademark shall be used in connection with the goods or services.

Once registration of the collective trademark has been obtained/granted, the association, organization, or group of persons shall inform the competent national office of any changes that may have been made in any of the documents referred to in this article.

Article 183. - The collective trademark may be assigned, transferred, or licensed in accordance with the internal bylaws of the association, organization, or group of persons.

These assignments, transfers, and licenses, in order to take effect in regard to third parties, shall be registered.

Article 184. - The relevant provisions of the Title on Trademarks of this Decision shall be applicable to this Title.

Title IX
ON CERTIFICATION MARKS Index

Article 185 .- A certification mark shall be understood to be any sign that is intended to be applied to goods or services, the quality or other characteristics of which have been certified by the owner of the mark.

Article 186. - A certification mark may be owned by a public or private business or institution; or a state, regional, or international organization.

Article 187. - An application for registration of a certification mark shall be accompanied by the regulations for use of the certification mark, stating which goods or services may be subject to certification by the owner of the mark, defining the characteristics guaranteed by the presence of the mark, and describing the control to which those characteristics shall be subjected before and after use of the certification mark.

The regulations for use of the certification mark shall be registered together with the mark.

The competent national office shall be informed of any change in the rules for use of the certification mark, which shall take effect in regard to third parties as of the date they are entered in the appropriate registry.

Article 188. - The owner of a certification mark may authorize its use by any person whose good or service complies with the conditions prescribed in the regulations for use of that mark.

The certification mark may not be used in connection with the goods or services produced, loaned, or marketed by the owner of that certification mark.

Article 189. - The relevant provisions of the Title on Trademarks of this Decision shall be applicable to this Title.

Title X
ON TRADE NAMES Index

Article 190 .- A trade name is understood to mean any sign that identifies an economic activity, a business, or a commercial establishment.

A business or establishment may have more than one trade name, including its firm name, corporate name, company name, or any other name that may be entered in the corporation registries or registries of commercial concerns.

Trade names exist independently of the company or firm names of juridical persons and it is possible for the two of them to exist at the same time.

Article 191. - Exclusive right to a trade name is acquired through use by a legal person for the first time in commercial activities and ends when the use of the name or activities of the business or establishment using that trade name cease to exist.

Article 192. - The owner of a trade name may prevent the use in commercial activity by third parties of an identical or similar distinctive sign, where such use would result in a likelihood of confusion or the risk of association of that sign with the owner or the products or services belonging to that owner; in the case of well-known trade names, where such use could produce unjust economic or commercial injury to the owner or involve taking unfair advantage of the prestige of the owner�s name or business.

The provisions contained in articles 155, 156, 157, and 158 shall be applicable to trade names, as relevant.

Article 193 .- The owner of a trade name may, in accordance with the domestic legislation of each Member Country, register or deposit the name with the competent national office. This registration or deposit shall be in the nature of a declaration only. Right to its exclusive use shall be acquired only as specified in article 191.

Article 194. - Signs that are included in the following cases are not eligible for registration as a trade name:

a) when they consist totally or in part of a sign that is contrary to morality or public order;

b) when their use is liable to create confusion in commercial circles or in the public as to the identity, nature, activities, line of business, or any other aspect of the company or establishment that is designated by that name;

c) when their use is liable to cause confusion in commercial circles or in the public as to the corporate source, origin, or other characteristics of the goods or services produced or marketed by the company; or,

d) where a prior application for or registration of the trade name already exists.

Article 195. - In order to register the trade name, the competent national office shall first make an examination to determine whether it contravenes the stipulations of the foregoing article. Member Countries may demand proof of its use as specified in their domestic legislation

The classification of goods and services used for the trademarks may be applicable to the registration of a trade name.

Article 196. - Registration of a trade name shall be for a term of ten years counted from the date of registration or deposit and may be renewed for successive ten-year periods.

Article 197. - The owner of a registered trade name may renounce the rights to that registration. Renunciation of the registration of a trade name shall come into effect only when that renunciation has been registered with the competent national office.

Article 198. - The owner of a trade name shall apply to the competent national office for its renewal within six months before expiry of its registration. Notwithstanding the foregoing stipulation, the owner of the trade name shall be allowed a grace period of six months following the date of expiration of the registration in which to apply for its renewal, at that time attaching receipts for payment of the fees prescribed in the domestic legislation of the Member Countries and paying any such surcharge as may be prescribed for. The registered trade name shall retain its full validity over that period.

For purposes of the renewal of a trade name, the competent national offices may demand proof of its use as specified in domestic legislation. In any case, the renewal shall be carried out on the same terms as the original registration.

Article 199. - The assignment of a registered or deposited trade name shall be registered with the competent national office in accordance with the procedure applicable to the assignment of trademarks, as relevant, for which the same fee shall be payable. Without prejudice to the foregoing, a trade name may only be assigned together with the business or establishment with which it is being used.

A trade name may be licensed. That license may be registered with the competent national office when so stipulated by domestic legislations.

Continue on to Title XI