DECISION 486: Common Intellectual
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
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
such powers of attorney as may be
proof of payment of the prescribed
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
the request for registration of a
the name and address of the
the nationality or address of the
applicant and, should the applicant be a legal entity, the place of
the name and address of the
applicant’s legal representative, if pertinent;
a statement of the trademark to be
registered, where such trademark is denominative only, without graphics, shape
a list of the specific goods or
services for which the trademark registration application is being filed;
a statement of the category to which
the products or services correspond; and,
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 statement that the applicant is
filing for registration of a trademark;
data that shall permit identification
of the applicant or person filing the application or enable the competent
national office to communicate with that person;
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;
a list of the specific goods or
services in respect to which the trademark protection is being applied for;
proof of payment of the prescribed
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
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
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
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:
are lodged without an indication
being given of the essential data identifying the opponent and the application
against which the objection is being filed;
are lodged after the deadlines have
have not paid the prescribed
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.
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.
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:
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;
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;
manufacturing labels, packages,
wrappings, packing, or such other materials as may reproduce or contain the
trademark, and selling or storing such materials;
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;
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;
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:
introducing into commerce, selling,
offering for sale, or distributing products or services that bear the said
importing, exporting, storing, or
transporting products that bear the said trademark; or,
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
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.
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
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
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.
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
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
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:
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;
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.
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
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.
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.
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
ON ADVERTISING SLOGANS
Article 175. - Member Countries may
register advertising slogans as trademarks in conformity with the respective
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
ON COLLECTIVE TRADEMARKS
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
a copy of the articles of association
of the organization, association, or group of persons applying for
registration of the collective trademark;
the membership list; and,
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.
ON CERTIFICATION MARKS
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
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
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
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.
ON TRADE NAMES Index
Article 190 .- A trade name is understood
to mean any sign that identifies an economic activity, a business, or a
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
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
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:
when they consist totally or in part
of a sign that is contrary to morality or public order;
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;
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,
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
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
Continue on to Title XI