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BOLIVIA, COLOMBIA, ECUADOR AND PERU

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BOLIVIA, COLOMBIA, ECUADOR AND PERU

IN A RECENT PRE-JUDICIAL INTERPRETATION, THE JUSTICE COURT OF THE ANDEAN COMMUNITY ADDRESSED DERIVATIVE TRADEMARKS, A NON-EXISTENT FIGURE IN THE ANDEAN LEGISLATION

The Court admitted that a trademark owner can file new derivative trademark applications, provided that the variations between the previously registered trademark and the derived trademark are not substantial, and that the products claimed in the application are identical to those already covered by the registered trademark.

 

Under this presumption, the Colombian Trademark Office rejected the argument that the figure of an octagon was a derived trademark from another figure of an octagon which had horizontal lines of different sizes in its interior, and stated that the applied sign failed to keep the essential elements of the registered trademark, that is, its distinctive elements.

On the contrary, said entity granted the registration of trademark L&H (word & design) considering that it was derived from a previous registered trademark, L&H (word), arguing that they only differed in complementary aspects.

The authorization for the registration of derivative trademarks has important consequences regarding oppositions, since they may only refer to the additional incidentally or complementary elements, not to the main distinctive element which is already granted registration.