The Andean Community law states that the registration of a trademark confers on its owner two rights: (i) a positive right, which consists in the use, assignment, or licensing of the trademark, and (ii) a negative right, which gives the right to prevent third parties from registering identical or similar trademarks and from using it in the market without authorization. According to Article 155 of Decision 486 of the Andean Community Commission, the owner can take legal action against anyone who infringes these rights, provided that specified requirements are met.
In Prejudicial Interpretation No. 243-IP-2022, the Court of Justice of the Andean Community clarified the concept of negative rights. It stated that non-commercial trademark use cannot be used as grounds for infringement actions. The Court provided examples of non-commercial use, such as when a consumer, who is not a business or competitor of the owner, expresses disagreement with purchased products or services as an exercise of the freedom of expression.
The court also stated that well-known trademarks have special protection against unauthorized use by third parties, even for non-commercial purposes on an exceptional basis. It confirmed that, under certain circumstances, an action may be filed for unauthorized use.
On July 17, 2024, Prejudicial Interpretation 237-IP-2021 expanded the interpretation of the use of well-known trademarks by third parties for non-commercial purposes. The following special conditions for owners of well-known trademarks to prohibit their public use for non-commercial purposes were set:
- Performing acts of public use of the notorious mark which are unrelated to the commercial use of the well-known mark.
- Public use must cause damage to the well-known mark, which has materialized in the dilution of its distinctiveness and commercial or advertising value. This use must affect the distinctiveness or notoriety and not only its image.
- The damage must be accurate, objective, and concrete, not a subjective perception or presumption. It must be proven; without damage, there is no infringement.
- The damage must be unfair, i.e., the public use of the notorious trademark must be contrary to the Law.
Regarding this last requirement, the Court states that if the use of the notorious trademark implies exercising a right, there would not be unfair damage. However, it would dilute its distinctive force, commercial, or advertising value.
A consumer could file a formal complaint before the pertinent authorities or informally before his family, work, or social environment concerning the products or services identified under a registered trademark without this being considered an infringement of trademark rights. In the same way, if the trademark owner believes that this claim affects its prestige, actions could be brought if appropriate.
On the other hand, the Court firmly states that there is no trademark infringement or use of a trademark when individuals refer to a trademark or trade name in exercising their freedom of
expression petition, protest (peaceful), or complaint right.
Through this interpretation, the Court corroborates that the negative right (ius prohibendi) of the trademark owner is not unlimited, even for well-known trademarks, so that the use by third parties for non-commercial or industrial purposes cannot be considered an infringement of industrial property rights.
Andrea Miño
Associated in CorralRosales
andrea@corralrosales.com