BOLIVIA, ECUADOR, COLOMBIA AND PERU
DE FACTO TRADEMARK COEXISTENCE SUGGESTS ABSENCE OF RISK OF CONFUSION
The Andean Community Court of Justice issued a prejudicial interpretation within Process 438-IP-2016, reiterating that de facto trademark coexistence or peaceful coexistence during several years may be an indication of absence of risk of confusion or association.
Even though the Court highlighted that coexistence in itself is inconclusive to determine the inexistence of risk of confusion or association, it was argued that it is a hint if a registered trademark has had presence in the market during a considerable an effective amount of time together with another sign without them having any problems posed.
It was stated that the registrability exam must be carried out upon conducting a prospective analysis (studying the future in order to determine if consumers may be misled) and a retrospective analysis (revising the past).
The Court expressed that whoever alleges the coexistence may submit evidence to prove absence of confusion, for instance differentiation studies by consumers and people participating in the distribution channels and proof that the signs have shared the same effective advertisement scenario such as specialized magazines, sports and musical events.
According to the Court, the following requirements must be fulfilled in order for the coexistence to have effects upon the registrability exam:
- Coexistence must be peaceful. No prior private complaints, judicial or administrative processes between the owners alerting to a possible risk of confusion or association could have occurred.
- It is necessary for the coexistence to take place in the same physical or virtual market; otherwise coexistence would not be peaceful. Therefore, the signs must share a geographic or virtual space in which goods and services are exchanged.
- Coexistence must occur during a prolonged timeframe in order for it to have an impact in consumers’ perception. The competent authority must evaluate the period taking into account the nature of the goods or services covered by the conflicting signs since trademarks for seasonal products, luxury goods and mass consumption goods will not have the same treatment, for example.
- Coexistence cannot be used to perpetrate, facilitate or consolidate an act of unfair competition.
- Coexistence must be complemented with other elements generating a total conviction of absence or risk of confusion or association for consumers.