OAS

ANDEAN COMMUNITY

DECISION 486: Common Intellectual Property Regime


(Continuation)

CHAPTER VII
On the Licensing System

Article 106 .- The right holder for a layout-design that is registered or for which registration has been filed may license one or more parties to exploit that lay-out design.

Any license to use the layout-design shall be registered with the competent national office. Failure to register the license shall render it invalid with respect to third parties.

Licenses, in order to be registered, shall be in writing.

Any interested party may file for registration of a license.

The registered right holder shall inform the competent national office of any change in the name or address of the registered layout-design right holder during the term of the licensing contract. Otherwise, any notification that may be made on the basis of the data entered in the registry shall be considered valid.

Article 107. - The competent national authority may, given a lack of exploitation or for reasons of public interest, in particular a national emergency, or for public health or natural security considerations, or to remedy an anti-competitive practice, and at the request of an interested party or of a competent authority, order the following at any time:

a) that layout-designs that are registered or for which registration has been filed shall be used or exploited industrially or commercially by a government institution or by one or more public or private legal entities that have been expressly appointed to do so; or

b) that the said layout-design shall be subject to the granting of one or more compulsory licenses, in which case the competent authority may grant such a license to any person who applies for it, subject to the conditions that have been stipulated for that purpose.

The conditions that have been stipulated for granting compulsory licenses with respect to invention patents shall be applicable to the granting of a compulsory licenses in regard to a layout-design.

CHAPTER VIII
On the Invalidation of the Registration

Article 108. - The competent national authority may, either ex officio or at the request of a party and at any time, declare the registration of a layout-design null and void, where:

a) the subject matter of the registration is not a layout-design according to the requirements stipulated in article 86;

b) the registration fails to comply with the requirements for protection set forth in article 87;

c) the registration was granted for a layout design applied for after the expiration of one of the periods established in article 97; or,

d) there are grounds for declaring the registration to be null and void according to domestic legislation covering administrative acts.

Where the grounds specified above are applicable to only a part of the layout-design, invalidation shall be pronounced only in respect of that part, as pertinent, leaving the registration valid for the other parts, provided that as a whole the layout-design complies with the requirements for originality stipulated in article 87.

The layout-design or the part of it that has been invalidated shall be deemed null and void as of the filing date of the application for its registration.

Article 109. - Where defects in administrative acts fail to produce absolute invalidation as specified in the preceding article, those acts shall be invalidated relatively. In such cases, the competent national authority may, in conformity with domestic legislation, declare them null and void within a period of five years counted from the date of registration.

Article 110 .- The competent national authority may, where a layout- design registration has been granted to a person that has no right to it, annul that registration. The invalidation proceeding may be brought only by the person with a right to registration of that layout-design. That right of action shall lapse five years from the date the registration was granted or two years following the date on which the person to whom that right belongs learned about the marketing in the Member Country of the product incorporating that layout-design, whichever period expires first.

Article 111. - In invalidation proceedings, the competent national authority shall request registered right holders to present their arguments and submit the proof they deem advisable.

Where that authority, under the domestic law of a Member Country, is the competent national office, the registered right holder shall present the arguments and submit the proof referred to in the previous article within a period of two months following notification.

Before the expiration of the period stipulated in the previous article, the interested party may request an extension of two additional months.

Once the periods stipulated in this article have expired, the competent national office shall rule on the invalidation of the registration and notify the parties of its decision.

Article 112. - The competent national authority may, where necessary to rule on the invalidation of a registration, request the right holder to submit one or more of the documents referred to in article 89 with regard to the registration that is the subject matter of the proceeding.

TITLE V
ON INDUSTRIAL DESIGNS Index

CHAPTER I
On Requirements for Protection

Article 113. - The particular appearance of a product that results from any arrangement of lines or combination of colors, or any two-dimensional or three-dimensional outward shape, line, outline, form, texture, or material, without the intended use or purpose of the said product being thereby changed, shall be considered an industrial design.

Article 114. - The right to register an industrial design belongs to the designer and may be assigned or transferred by succession.

Registration right holders may be natural persons or legal entities.

If several persons make an industrial design jointly, they shall share the right to its registration.

If several persons make the same industrial design, each independently of the others, registration shall be granted to the person or assignee with the first filing date or, where priority is claimed, date of application.

Article 115. - Industrial designs that are new shall be registrable.

An industrial design shall not be considered new if, before the filing date or validly claimed priority date, it has been made accessible to the public in any place or at any time, by description, use, or any other means.

An industrial design shall not be new by virtue of the mere fact that it embodies secondary differences in relation to earlier creations, or that it refers to a category of products different from that to which the said creations belong.

Article 116. - The following creations shall not be registrable:

a) industrial designs when, the prevention of the commercial exploitation of which within the territory of the Member Country where registration is being applied for, is necessary to protect morality or public order. To those ends, commercial exploitation of an industrial design shall not be considered contrary to morals and public order merely by reason that the exploitation is prohibited or regulated by a legal or administrative provision;

b) industrial designs the appearance of which was dictated essentially by technical or functional considerations and that fail to incorporate any arbitrary contribution by the designer; and,

c) industrial designs that consist only of a form the exact reproduction of which proved necessary in order to permit the mechanical assembly or connection of the product incorporating the design with another product of which it is a part. This prohibition shall not be applicable to products in which the design consists of another way to permit the assembly or the multiple connection of the product or of its connection within a modular system.

CHAPTER II
On the Registration Procedure

Article 117 .- An application to register an industrial design shall be filed with the competent national office and shall contain the following:

a) the petition;

b) a graphic or photographic representation of the industrial design. This representation, in the case of two-dimensional designs incorporated onto a flat material, may be replaced by a sample of the product incorporating the design;

c) such powers of attorney as may be needed;

d) proof of payment of the prescribed fees;

e) a copy of the document recording the ceding or transfer to the applicant of the right to register the industrial design, if applicable; and,

f) copies of any applications for registration or other protection of an industrial design filed abroad by the applicant or assignee in respect of the same design for which a registration application or claim is being filed in the respective Member Country.

Article 118. - The petition for the industrial design registration application shall be a form and shall include the following information:

a) the request for registration of the industrial design;

b) the name and address of the applicant;

c) the nationality address of the applicant and, if the applicant is a legal entity, the site of incorporation;

d) an indication of the kind or type of product to which the design shall be applied and the category and sub-category of such products;

e) the name and address of the designer, if other than the applicant;

f) the date, number, and identification of the office where any applications for registration or other protection of an industrial design were filed or obtained abroad by the applicant or assignee in respect of the same design claimed in the application being filed in the respective Member Country, if applicable;

g) the name and address of the applicant’s legal representative, if pertinent; and,

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

Article 119. - 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 the registration of an industrial design;

b) data identifying the applicant or person filing the application that will enable the competent national office to communicate with that person;

c) a graphic or photographic representation of the industrial design. This representation, in the case of two-dimensional designs incorporated onto a flat material, may be replaced by a sample of the product incorporating the design; and,

d) a proof of payment of the prescribed fees.

Failure to comply with any of the requirements specified 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 120. - The competent national office shall examine the application within 15 days following the filing to ascertain whether it meets the terms and conditions conditions of form specified in articles 117 and 118.

If the examination of terms and conditions reveals that the application does not fulfill the requirements referred to in the preceding paragraph, the competent national office shall notify the applicant to complete those requirements within a period of thirty days following the date of notification. The said period may be extended once, upon request, for an equal length of time without loss of priority.

If, on expiration of the specified period, the applicant has failed to comply with the required conditions, the application shall be considered abandoned and shall lose its order of priority. Without prejudice to this, the competent national office shall maintain the information contained in the application confidential.

Article 121. - If the application fulfills the stipulated requirements, the competent national office shall order its publication.

Article 122 .- Within a period of thirty days following the date of publication, any person with a legitimate interest may, one time only, present valid reasons for contesting the registration of industrial design.

The competent national office shall grant such persons once, upon request, an additional period of thirty days in which to present valid reasons for their opposition.

Reckless objections may be sanctioned if so stipulated by domestic legislation.

Article 123 .- If any objections have been lodged, the competent national office shall request that the applicants present their arguments or submit documents, as they see fit within thirty days following that notification.

The competent national office shall, upon request, grant an additional period of thirty days in which to make a defense against the objections that have been raised.

Article 124. - Upon expiration of the period stipulated in the preceding article or should no objections have been raised, the competent national office shall conduct an examination to ascertain whether the subject matter of the application complies with the requirements established in articles 113 and 116.

The competent national office shall not make an examination ex officio of the novelty of the subject matter of the application if no valid reasons are presented based upon the existence of a prior right or the novelty of the industrial design.

Without prejudice to the foregoing, if the lack of novelty of an industrial design is glaringly obvious, the competent national office shall reject the application ex officio.

Article 125. - An application for registration of an industrial design may not be consulted by third parties until publication has been ordered at the conclusion of the stipulated period, except where written consent has been obtained from the applicant.

Any parties who prove that the application for registration of an industrial design is attempting to use against them of rights conferred on the applicant for registration of an industrial design by the said application may consult the file before its publication without the consent of the applicant.

Article 126. - The competent national office shall grant the registration of the industrial design and issue the corresponding certificate to the rights holder upon fulfillment of the stipulated requirements. Failure to comply with those requirements shall cause the competent national office to reject the application.

Article 127. - Member Countries shall use the International Classification for Industrial Designs established by the Locarno Agreement of October 8, 1968 and its effective amendments to organize and classify industrial designs.

CHAPTER III
On the Rights conferred by Registration

Article 128. - Registration of an industrial design shall be for a term of ten years, counted from the filing of the application in the Member Country.

Article 129. - Registration of an industrial design shall confer on the owner thereof the right to prevent third parties from making use of the design concerned. By virtue of that prohibition, the owner of the registration shall be entitled to proceed against any third party who, without the consent of the right holder, manufactures, imports, offers for sale, markets, or makes commercial use of products that incorporate or reproduce the industrial design.

Registration shall likewise confer the right to proceed against any person who produces or markets an article whose design only presentes minor differences with respect to the protected design or where appearence is the same as the latter protected design.

Article 130. - The protection accorded to an industrial design shall not apply to elements or characteristics of the design dictated essentially by technical or functional considerations or that fail to incorporate any arbitrary contribution by the designer.

The protection accorded to an industrial design shall not apply to the exact reproduction of such elements or characteristics as may be needed to allow the product incorporating the design to be mechanically assembled or joined to another product of which it is a part. This restriction shall not apply where the design assumes a particular form to allow for the assembly or multiple connections of the products or the connection of those products within a modular system.

Article 131. - Registration of an industrial design shall not confer the right to proceed against a third party who makes commercial use of a product incorporating or reproducing the design once it has been introduced into the commerce of any country by the right holders or another person authorized by them or with economic ties to those right holders.

For 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 the exploitation of the industrial design, or when a third party is able to exert that influence over both persons.

Article 132. - The competent national authority may, either ex officio or at the request of a party and at any time, declare the registration of an industrial design null and void, when:

a) the subject matter of the registration is not an industrial design according to the requirements established in article 113;

b) the industrial design fails to comply with the requirements for protection set forth in article 115;

c) the registration was granted for subject matter that is excluded from protection by the stipulations of article 116; or,

d) there are grounds for declaring the registration null and void according to domestic legislation covering administrative acts.

Article 133. - The provisions stipulated in articles 17, 34, 53 paragraphs a), b), c) and d), 56, 57, 70, 74, 76, 77, 78, and 79 shall be applied in respect of industrial designs.

TITLE VI
ON TRADEMARKS Index

CHAPTER I
On Registration Requirements

Article 134. - For purposes of this system, any sign that is capable of distinguishing goods and services on the market shall constitute a trademark. Signs that are capable of graphic representation shall be eligible for registration as trademarks. The nature of the goods or services to which a trademark is to be applied shall in no case form an obstacle to the registration of the trademark.

The following signs, among others, shall be capable of constituting a trademark:

a) words or a combination of words;

b) pictures, figures, symbols, graphic elements, logotypes, monograms, portraits, labels, and emblems;

c) sounds and smells;

d) letters and numbers;

e) a color demarcated to give it a specific shape, or a combination of colors;

f) the shape of a product its packaging or wrappings;

g) any combination of the signs or means indicated in the items above.

Article 135. - Signs may not be registered as trademarks when they:

a) fail to constitute a trademark according to the requirements stated in the first paragraph of the previous article;

b) are lacking in distinguishable characteristics;

c) consist solely of the everyday shape of goods or their packaging, or of shapes or characteristics dictated by the nature or particular function of the product or service in question;

d) consist exclusively of shapes or other elements that attribute a functional or technical advantage to the product or service to which they are applied;

e) consist solely of a sign or statement that may serve in commerce to designate or describe, in respect of the goods or services for which they are to be used, their quality, quantity, purpose, value, geographical origin, or time of production, or that impart other details, characteristics, or information, including expressions of praise for those goods or services;

f) consist exclusively of a sign or statement that is the common or technical name of the product or service concerned;

g) consist solely of or have become a sign or statement which, in everyday language or normal use within the country, is the common or usual designation for the goods or services in question;

h) consist of a color in isolation, without any demarcation to give it a specific shape;

i) are liable to create confusion in business circles or the public, in particular as to the geographical origin, nature, manufacturing methods, characteristics, or qualities of the goods or services concerned, or their suitability for use;

j) reproduce, imitate, or contain a protected indication of origin that is liable to create confusion or a mistaken association with the indication in relation to the goods themselves or different goods, or that involve taking unfair advantage of the well-known character of that appellation among the public;

k) contain a protected appellation of origin for wines and spirits;

l) consist of a national or foreign geographical reference that is liable to create confusion in respect of its application to products or services;

m) reproduce or imitate, as trademarks or elements of those trademarks, without the permission of the competent authority of the State or international organization concerned, heraldic elements, such as coats of arms, flags, and emblems, and the official signs and stamps used for the purposes of government control and guarantee and the coat of arms, flags and other emblems, initials or designations of any international organization;

n) reproduce or imitate signs denoting conformity with technical standards, except where the registration thereof is applied for by the national body responsible for standards and quality requirements in Member Countries;

o) reproduce, imitate, or include the indication of a plant species protected in a Member Country or any other country, where application of the sign to goods or services relating to that species of if its use is likely to cause confusion or a mistaken association with that variety; or

p) are contrary to law, morality, public order or good manners.

Notwithstanding the provisions stipulated under items b), e), f), g) y h), a sign may be registered as a trademark where its continued use in a Member Country by the applicant or assignor has endowed it with a distinctiveness in respect of the products or services to which it is applied.

Article 136 .- Those signs the use of which in commerce may constitute an impediment to the rights of third parties, may likewise not be registered as trademarks, in particular where:

a) they are identical, or similar to a trademark filed for registration or registered earlier by a third party for the same goods or services, or for goods or services in respect of which use of the trademark is likely to lead to confusion or mistaken association;

b) they are identical or similar to a protected trade name, label, or emblem that, given the circumstances, their use would result in a likelihood of confusion or mistaken association;

c) they are identical or similar to a filed for or registered advertising slogan that, given the circumstances, their use would result in a likelihood of confusion or mistaken association;

d) they are identical or so similar to a distinctive sign belonging to a third party where, the applicant being or having been a representative or distributor of the owner of the protected sign in a Member Country or elsewhere or a person expressly authorized by that right holder, their use, given the circumstances, would result in a likelihood of confusion or mistaken association;

e) consist of a sign that is capable of affecting the identity or prestige of legal entities, whether non-profit or not, or natural persons other than the applicant or identifiable by the general public as being such a different person, particularly in regard to a given name, family name, signature, title, nickname, pseudonym, image, portrait, or caricature, where no consent has been obtained from that person or, if deceased, the declared heirs of that person;

f) consist of a sign that may violate the intellectual property right or copyright of a third party, unless the consent of that party has been obtained;

g) consist of the name of indigenous, African American, or local communities, or of such denominations, words, letters, characters, or signs as are used to distinguish their products, services or methods of processing, or that constitute an expression of their culture or practice, unless the application is filed by the community itself or with its express consent; and,

h) consist of a total or partial reproduction, imitation, translation, transliteration, or transcription of a well-known sign belonging to a third party without regard to the type of product or service to which it shall be applied, the use of which would lead to a likelihood of confusion or mistaken association with that party,; taking unfair advantage of the prestige of the sign; or weakening its distinctive force or its use for commercial or advertising purposes.

Article 137 .- The competent national office may, when it has sufficient reason to believe that the registration was applied for in order to engage in, contribute to, or strengthen an act of unfair competition, may refuse to register that trademark.

Continue on to Chapter II