Our associate Andrea Miño, specialist in Intellectual Property, has published a new article in World Trademark Review on the contradictory criteria for the examination of trademarks in similar cases in the Andean Community.
In the words of our expert, “It’s the principles of primacy and direct effect on the obligation of member states to optimize the specialized legal system to ensure strict and uniform compliance with Andean community regulations. At the same time, the principle of autonomy empowers the competent offices to issue resolutions without affecting the decisions adopted by other member countries or their own; however, the decisions must be issued in strict adherence to what is established in the regulations and jurisprudence that governs the trademark area at the community level”.
Taking this context into account, the decisions issued by the IP offices of Ecuador, Colombia and Peru should be analyzed, since the criteria given are contradictory for the registrability of the same trademark intended to cover identical products.
Our associate also states in this publication that “In the case of Ecuador, Resolution No. 0004531, the National Industrial Property Directorate of the National Intellectual Rights Service (SENADI), determined that the same trademark, which protected class 5 products, did not meet the requirements for registration, since it was included in one of the grounds for refusal of registration provided for in the Andean Community regulations; that is, the trademark made direct reference to the products it intended to identify”.
SENADI, however, ignored the mixed nature of the trademark and only established that the trademark applied for “was not distinctive because it was a generic and descriptive term, and commonly used.”