Andean Community: Enforcing a Famous Mark Without Use

ANDEAN COMMUNITY: Enforcing a Famous Sign Without Use

Contributor: Rodrigo V. Bermeo-Andrade, Bermeo & Bermeo Law Firm, Quito, Ecuador

Verifier: Nidia Osorio, Barrios Montenegro Abogados, Bogotá, Colombia

Mr. Bermeo-Andrade and Ms. Osorio are members of the Famous and Well-Known Marks Committee—Latin America and Caribbean Subcommittee.

On February 23, 2017, the Colombian Superintendency of Industry and Commerce (SIC) issued a decision based on Article 229 of Decision 486 of the Andean Community Law that clarifies two issues: (1) whether famous trademarks are bound by the real use requirement to maintain protection; and (2) whether they may be canceled for non-use in the Andean Community.

SIC had canceled the trademark FYBECA in Class 35, owned by ProvefarmaS.A, the largest Ecuadorian drug store. Mundial de Partes S.A.S. had filed a cancellation action against FYBECA claiming non-use as preparation for the filing of its mark FEBECA to protect retail services relating to hardware. While Provefarma submitted evidence to prove real use in Ecuador (valid for the whole Andean Community), SIC canceled the registration for FYBECA because the evidence submitted “would relate to the use of the distinctive sign as a trade name and/or sign but not as a trademark.” SIC File No. 02113685 002006, Dec. 19, 2016.

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However, when Mundial de Partes applied for registration for FEBECA in Class 35 in Colombia, Provefarma filed an opposition based on its Ecuadorian registration for Andean-wide rights (Andean Opposition). Considering that its Colombian marks were under attack, Provefarma relied on the well-known status of FYBECA in Ecuador and its Ecuadorian registration in Class 35.

The burden of proof was on Provefarma, which submitted the same evidence that was filed as a defense in the cancellation action, namely, sales figures, photos and compliance documents from the different stores, media appearances, labels of store brand products, and catalogues, among others. Colombia’s IP Office accepted this evidence to prove the well-known character of FYBECA:

To summarize, the evidence previously analyzed failed to prove real use in commerce as a trademark for a particular range of services, which is why the IP Office cancelled Registration No. 271923. Nevertheless, when analyzing the same evidence to determine the scope of protection for the trade name FYBECA (not the service mark), the IP Office found that it is a sign that is well-known in the Ecuadorian Market to identify a business in the industry of drug stores, and in that sense, opposable against third parties. SIC File No. 15260729, Feb. 23, 2017.

This is a significant decision because SIC relied on the well-known character of a trade name in Ecuador to deny a trademark registration in Colombia, even after the local Colombian trademark registration for the same name was canceled for non-use. It builds on the text of Article 229 by shedding light on a disputed area of trademark law and may become the foundation for standardizing the protection of famous and well-known marks across the Andean Community.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2018 International Trademark Association
“This article first appeared here in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).”

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