28 November 2016TrademarksAlfredo Barreda

Law firm interview: sky-high IP

“Peru, Bolivia, Colombia and Ecuador are the four member countries of the Andean Community,” says Alfredo Barreda, partner at Barreda Moller in Peru. “This Andean integration system, of which Venezuela was also member until 2006, has a supranational law on industrial property matters, namely Decision 486, which regulates the common IP regime in all the member countries.”

Decision 486 replaced Decision 344 and was issued by the Andean Community Commission on September 14, 2000 with the purpose of adjusting the IP system of the Andean Community to the rules of the TRIPS Agreement.

Barreda says: “More than 15 years has passed since its entry into force and the trademark offices of the member countries are getting together with the general secretariat of the Andean Community to evaluate the convenience of introducing changes to the system and modifying Decision 486.”

He adds that, unlike in Europe, “Decision 486 does not establish a unified Andean trademark registration office.”

Barreda explains that trademark protection in each Andean Community country is territorial and is generated through the registration of marks at the trademark office of each member country.

“Decision 486 provides for certain trademark rights which make the Andean trademark regime a ‘sui generis’ system,” says Barreda.

He further makes a comparison to the US system: “As opposed to the US system, use of a trademark is not required when obtaining or renewing a trademark registration. Use of a trademark provides no rights in the Andean Community (except in the case of notorious marks).”

Barreda explains that the system provides privileges to the owners of trademarks in any Andean Community country, such as the right to oppose the registration of junior marks in a member country based on a mark registered or previously applied for in any other member state.

Rights owners can also defend a trademark registration against a non-use cancellation action in one member country by proving the use of the mark in any other member country, as well as claim notoriety of a trademark in one member country when the mark is notorious in any other Andean Community state.

Barreda adds that while countries can adopt national regulations, “these cannot transgress Decision 486”.

He explains that engaging in conduct that is contrary to the Andean legal system would infringe article 4 of the Treaty Creating the Court of Justice of the Andean Community, according to which member countries must not adopt any measure that conflicts with the rules that constitute the legal system of the Cartagena Agreement or that somehow hinders its application.

The trademark offices of Bolivia, Colombia, Ecuador and Peru are in continuous contact for the exchange of information, particularly to stay updated on the status of trademarks which have been registered or applied for in the other member countries.

“Decision 486 provides for certain trademark rights which make the Andean trademark regime a ‘sui generis’ system.”

“In this regard, although trademark registration is territorial, trademarks registered or applied for in any one Andean Community country can be used as the basis for oppositions against junior marks in other Andean countries,” he says.

“Although all the member countries of the Andean Community are governed by the same industrial property law, namely Decision 486, each trademark office is independent from the others and applies its own criteria when interpreting the rules of Decision 486.”

He explains that the Andean Court of Justice interprets the norms of the Andean Community legal system, with the purpose of securing their uniform application in the member countries.

“The Andean system provides for the possibility that national competent authorities resort to the Andean Court of Justice to seek judicial interpretation of the Andean legislation, including Decision 486, with the objective of consolidating the interpretation of such rules.”

Compromise needed

In 2006, Peru and Colombia signed free trade agreements with the US.

“The compromises adopted in such agreements left Peru and Colombia with the need to adjust their IP legislation in order to be in accordance with the rules of the free trade agreements,” says Barreda.

He further explains that as a member of the Andean Community—and thereby subject to the Andean IP regime—Peru and Colombia were not only required to modify their domestic legislation but had to propose and secure the amendment of the Andean legislation.

“Based on a proposal submitted by the Peruvian government, the Andean Community Commission issued Decision 689, which maintains the common IP regime of Decision 486, although it established prerogatives so that the member countries may choose to adopt some changes to the system in specific matters,” Barreda says.

He adds that in regards to trademarks, such changes relate mainly to the prerogatives to adopt a multiclass registration system, establish the recordal of licensing agreements as optional instead of mandatory, and prohibit the protection of appellations of origin that affect prior trademark rights.

“Regarding Peru, the Peruvian government made use of the prerogatives in Decision 689 and introduced such changes in domestic legislation through the issuance of Legislative Decree No. 1075.”

The Peruvian trademark office, the National Institute for the Defense of Competition and Intellectual Property Protection, has dealt with the challenges associated with the implementation of such developments smoothly and efficiently, according to Barreda.

“As in every system, some aspects can be improved, such as the management of multiclass registrations by the trademark office, particularly in those cases where, in the same multiclass application, the registration is granted in one or more classes but rejected in others.”

Alfredo Barreda is a partner at Barreda Moller. He was admitted to practise law in 1982. Barreda focuses on trademarks, patent litigation, and licensing. He studied at the Catholic University of Peru and the University of California. He is a member of ASIPI, AIPLA and INTA. He can be contacted at: mail@barredamoller.com

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