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BOLIVIA, COLOMBIA, ECUADOR AND PERU

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BOLIVIA, COLOMBIA, ECUADOR AND PERU

DERIVATIVE TRADEMARKS OR SUB-BRANDS

In Prejudicial Interpretation 198-IP-2014, the Andean Tribunal of Justice pointed out that Derivate Trademarks or the so called sub-brands are those requested by the same applicant to register on the basis of a principal trademark with minor variations, and in connection with the same products or services. 

 

The Andean Tribunal of Justice established that sub- brands are different from trademarks formed by a generic term, since in the latter case the owner cannot forbid that others use the generic term. On the contrary, in the sub-brands it´s owner has the right to prevent third parties to reproduce the distinctive element of the trademark.

Furthermore, it is important to note that sub-brands are registered following the same procedures as any other trademark. However, the oppositions filed by third parties can only be based on the complementary elements and not on the distinctive element.

Finally, the Court concluded that owning a sub-brand does not imply the automatic registration of the sign since the National Trademark Office will have to do the registrability analysis taking into account all of the requirements indicated by the Andean Decision.