Bermeolaw is a leading firm when protecting non-traditional marks such as tridimensional trademarks. We have recently obtained Registration No. 5805-2022 for BVLGARI’s SNAKE HEAD design used for their Serpenti collections and Registration No.20-2022 for the combined 3D trademark for SOMETHING SPECIAL PACKAGING in the name of HILL THOMSON & CO., LIMITED.
These applications were filed in 2015. Lack of guidelines caused the registration process to last more than 7 years. Finally the Andean Court of Justice issued guidelines to harmonize and speed up the registration process of three dimensional marks.
The International Trademark Association’s Bulletin just published our article with further details:
ANDEAN COMMUNITY: Guidelines Issued on Examination of 3D Marks
Contributor: Rodrigo V. Bermeo-Andrade, Bermeo & Bermeo Law Firm, Quito, Ecuador
INTA Famous and Well-Known Marks Committee.
Verifier: Jorge Allende, ALLENDE & GARCIA ABOGADOS, Lima, Peru, INTA Legislation and Regulation Committee
The Andean Court of Justice issued an interpretation on the examination of 3D marks on May 13, 2022. Interpretation No. 81-IP-2020 outlines the different elements that the Andean Community’s intellectual property (IP) offices need to consider when examining these marks.
The Andean Community Decision 486, which governs IP regulations in Bolivia, Colombia, Ecuador, and Peru, allows the registration of nontraditional marks. Article 134 provides a broad definition of trademarks that can be graphically represented and are able to distinguish different products or services. The law expressly refers to shapes, containers, or packaging of products as 3D marks, but combinations of these elements are also recognized as registrable marks.
In its interpretation, the court outlined that the first step is to identify and exclude from the analysis the common shapes of the products or their containers. While it is not required for trademark owners to use such forms, several of them regularly use those shapes in their products or containers. The common shapes, therefore, may not be considered a 3D mark if other parties are already using them in the market.
Secondly, the IP office must identify and exclude from registration any figure which serves a functional purpose for the product. However, if excluding all those elements from the registrability is not feasible, the examiner must consider the whole impression of the mark in order to find distinctiveness.
The court agrees that 3D marks may be protected in two different ways. Pure 3D marks are defined as 3D marks where the elements alone provide distinctiveness when considering their height, width, and depth.
The examination for pure 3D marks should include all the elements that add distinctiveness, such as shapes, lines, perspectives, engravings, angles, and the inclusion of any arbitrary or special element that causes a different overall impression from other products in the market. The examiner must analyze whether consumers can identify a commercial origin of the product by the shape itself.
If consumers need to consider words, designs, or labels, the court identifies these as combined 3D marks, where the 3D shape is only one of its components.
The new guidelines clarify that 3D marks may consist only of shapes or be a combination of shapes and additional elements. These guidelines are important as they recognize the protection of 3D marks and harmonize how IP offices of the Andean Community examine these applications.
Although every effort has been made to verify the accuracy of this article, 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.
© 2022 International Trademark Association
“This article first appeared here in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).”