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Our associate Andrea Miño Moncayo published the following article in WTR Daily “Well-known and Renown trademarks; nullity actions for bad faith – new jurisprudential precedents-” and analyzed the Preliminary Interpretation 128-IP-2022, published in the Official Gazette of the Court of Justice of the Andean Community on October 11, 2023. This jurisprudence identified possible signs that could lead to the conclusion that there is bad faith in the registration of a well-known trademark that has not been registered in the Community territory.
How does the Community legislation address the issue of a trademark´s nullity within the Andean Community? The Andean Community legislation establishes that the Andean IP Offices may declare ex officio or at the request of a third party with a legitimate interest, the nullity of a trademark registration when it has been granted in contravention of the relative or absolute grounds established in the regulation or obtained in bad faith.
Miño stated that the relative grounds refer to whether the registration was granted in violation of third-party rights, bad faith, or unfair competition. On previous occasions, community jurisprudence established that in order to prove the existence of actions contrary to good faith, the plaintiff was obliged to prove that the applicant had prior knowledge of the registered trademark and to demonstrate, at least, the existence of a contractual relationship between the parties. Nevertheless, there were no jurisprudential precedents that developed nullity actions in relation to well-known trademarks.
The Court clarifies that, in the case of well-known or renowned trademarks, the IP Office must evaluate this prior knowledge. If the trademark is renowned abroad, it would not be necessary to prove the existence of a prior relationship between the applicant and the legitimate owner of the trademark. If this trademark is well-known, it would be sufficient to demonstrate that the applicant is part of the relevant segment that is aware of the notoriety of the applied for or registered trademark.
These signs do not apply to non-well-known or non-renowned trademarks, i.e., ordinary trademarks and there is not, moreover, at least a competitive connection between the goods and services protected by the conflicting trademarks.
How to identify “opportunistic behavior and possible bad faith of a trademark applicant? The Court emphasizes that the “opportunistic behavior” of the applicant to determine a bad faith action, can be revealed when the applicant intends to appropriate several trademarks used and known abroad, without there being a real use on its part in the local market. This would show that the applicant’s intention in obtaining this plurality of registrations could be to sell them to their original owners when they are interested in the community market.
Through this interpretation, the Court seeks to avoid the appropriation of well-known and internationally renowned trademarks by unauthorized third parties. This infringement of trademark rights has increased in our country through registration applications filed indiscriminately at the IP Office by third parties other than the original owners, as well as through the commercialization of goods not authorized to use these trademarks.
In this sense, the author concludes, the Court establishes a precedent against actions that may generate damage to the rights of foreign persons or companies, whose trademarks, due to the wide recognition acquired, were registered by third parties within the community territory looking for an unfair advantage, configuring actions contrary to good faith.
This article first appeared in WTR Daily, part of World Trademark Review, in October 2023. For more information, go here.