The Common Industrial Property Regime of the Andean Community (CAN) to which Bolivia, Colombia, Ecuador, and Peru belong, provides a series of advantages to applicants filing trademark applications or holding trademarks in any of those countries.
In addition to the various methods for obtaining protection of trademarks that enable the holder to benefit from systems that cover several countries with a single trademark registration, such as the European Union trademark, the OAPI (African Intellectual Property Organization) or Benelux (the union of Belgium, Netherlands and Luxembourg), or to designate countries of particular interest in a single application, as in the case of the international trademark, or Madrid system, there are also other systems where the trademark can be seen as a kind of “hybrid ” which is granted certain advantages without actually being part of a unified trademark protection system.
This is the case of the common Intellectual Property Regime of the Andean Community (CAN) to which Bolivia, Colombia, Ecuador and Peru belong, a system regulated by Decision 486 of the CAN Commission. This system mainly regulates rights concerned with inventions and other technical solutions, distinctive signs, industrial designs and unfair competition linked to intellectual property.
There is no specific “Andean trademark” which is valid throughout the territory of all the member countries, and therefore, if protection is sought for a trademark in all the CAN countries, it is still necessary to file an application independently in each country of the Andes region. However, a trademark registration or application in any of the CAN countries does provide applicants with a number of advantages.
- Firstly, the Decision provides for the possibility of trademark holders to file oppositions in other countries in the Andean region, the purpose being to prevent rights being granted to identical or similar marks. Article 147 of Decision 486 addresses oppositions in the Andean region, stating that the holder of an earlier trademark (albeit already registered or an earlier application) in any country of the CAN, is legitimately entitled to file oppositions in other member states based on their trademark. There is a condition however, in that it is necessary to attest to a genuine interest in the market of the member state where the opposition has been filed. For this purpose, a trademark application should be filed in that country simultaneously with the opposition. Thus, if the holder of a trademark in Peru discovers an identical or similar application to their own mark in Colombia, they could file an opposition to the Colombian trademark application, based on the Peruvian trademark, provided that at the same time that the opposition is filed, they also file a trademark application in Colombia. When the opposition is based on a trademark application awaiting grant, the opposition procedure (and consequently the contested application) shall be suspended until the application for the earlier trademark has been resolved.
- Secondly, Andean Decision 486, article 165, also refers to the fact that use of the trademark in one of the CAN countries can be considered effective use in the other countries as well. In this way, use in at least one of the member states by the holder or a licensee, or by another duly authorized person is sufficient to demonstrate use in any of the CAN countries.
Therefore, although there is no Andean trademark as such, if a trademark is applied for in one of the CAN countries, or if an opposition to a trademark application is filed in one of the member states of the Community, it is important to bear in mind that the prior existence of a trademark in one of the member states could block that trademark by means of an Andean opposition procedure. Furthermore, if it is decided to file a cancellation action on grounds of non-use, use of the trademark in any country of the Community will also be deemed valid use in all the remaining countries.