Once granted, a trademark gives its owner the exclusive right to prevent unauthorized third parties from using a similar trademark that could cause confusion and association among consumers. The owner is also obliged to use the trademark effectively in the market as registered and for the protected goods or services.
Unjustified non-use of the trademark may result in cancellation of the acquired right, which entitles a third party to file an action for cancellation for non-use.
Article 165 of Decision 486 does not make a specific distinction as to whether cancellation actions are appropriate in the case of well-known or renowned trademarks; however, the Andean Court of Justice has repeatedly stated in its jurisprudence that cancellation actions for lack of use are not suitable against a well-known trademark, due to the exceptional protection granted by Community regulations to this type of trademark.
The trademark’s well-known quality must have been declared and be in force in one of the member countries of the Andean Community, which implies the obligation of the owner to prove, before the competent IP Office, the facts proving the trademark’s reputation.
The National Service of Intellectual Rights by Resolution No. OCDI-2022-859, issued in November 2022, breaks the typical standards of evidence acceptance. The IP Office rejected the cancellation action filed against the trademark NOEL in international class No. 29 based on the well-known status, duly proven, of this trademark to protect “cookies” in international class No. 30.in order to guarantee the special protection of well-known trademarks.
The Ecuadorian IP Office stated that the well-known status of the trademark NOEL was demonstrated through declarations of notoriety issued by the Colombian IP Office during the relevant time frame for the cancellation action (three years before the filing of the action). The IP Office ratified the existence of a competitive connection between the goods for which well-known was declared (cookies IC. 30) and those that the trademark under cancellation protects (IC. 29) since there is a competitive connection between these goods
In this way, the IP Office ratified the special protection that well-known trademarks have in the Andean countries. Stating that this type of trademark breaks the principles of territoriality, registration, and real and effective use. It concluded that, in strict compliance with the applicable normative and jurisprudential precepts, it is not appropriate to analyze the cancellation for lack of use against well-known trademarks.
This decision sets a precedent for the protection of trademarks that, thanks to the prestige and positioning achieved in the market and the advertising efforts made by their owners, have obtained a well-known status in the Andean Community.