Abrupt procedural change in Andean oppositions adversely affects trademark owners
The Bolivian Trademark Office has abruptly, and without any adjustment period, changed its established procedure for filing Andean oppositions, in a move that is widely regarded as an aberrant change to the interpretation of the requirement of “showing of real interest” under Article 147 of Andean Community Decision 486. More specifically, it is believed that the change stems from the Trademark Office's poor interpretation of Andean Resolution 105-IP of the Andean Community Court of Justice. The over-literal interpretation of the wording of Resolution 105-IP has unduly affected trademark owners in the Andean Community.
By way of background, Decision 486 (and, previously, Decision 344) allows trademark owners in one of the Andean countries to file oppositions against trademark applications in any other Andean country, even if the opponent does not hold a trademark registration or application in the country where the opposition is to be filed. The rationale of this provision is to allow trademark owners to prevent similar or identical applications from maturing into registration in this common market. The same provision existed under Decision 344. However, it had become evident that several trademark owners were taking advantage of this mechanism and were filing oppositions throughout the Andean Community without having a real intention of using the mark in these countries. Therefore, an amendment was introduced and, under Decision 486, the requirement that an opponent must show "real interest" was added. In order to fulfil this requirement, the opponent must file a trademark application in the country where the opposition is filed; pursuant to Article 147, such application must be made "at the time of filing the opposition".
This provision had been applied without any hiccups until the Andean Community Court of Justice issued Resolution 105-IP, which caused the Bolivian Trademark Office to misinterpret the use of the word ‘simultaneous’ and change its standard practice.
Although the main effect of this change is procedural, it also has an impact on the notional concept of justice. Changing an established practice without prior notice or a period of adjustment is, in and of itself, an act that runs afoul of equity. Any procedure adopted, instituted and followed by an authority must be notified, published and advertised well in advance of its commencement date. Rather than following this elementary principle, the Bolivian Trademark Office changed its practice literally from one day to the next, and many trademark owners and practitioners have had their oppositions improperly and undeservedly dismissed. Ill-intentioned applicants are now seeing their applications mature into registration as a result of poor judgement on the part of the Trademark Office. Unfortunately, the blame is being placed mostly on trademark practitioners, while trademark owners suffer actual damage.
The second issue is that, under the old interpretation, both the notice of opposition and the trademark application had to be filed simultaneously. The problem is that ‘simultaneous’ means ‘at the exact same time’; given that oppositions and applications are independent processes, they must necessarily be filed sequentially which, technically, is not simultaneous. This issue, which the change in practice purported to correct, persists under the new interpretation. The filings will always be sequential and, consequently, no actual correction has been made and a new, arbitrary interpretation has been implemented. However, the Trademark Office is forbidden from making discretionary interpretations under the legality principle, so there is an indicium of administrative transgression of the law.
Most importantly, Resolution 105-IP cannot be construed by a learned person as a grammatical explanation of the definition of ‘simultaneous’. It seems obvious that this term is being used freely in an attempt to reaffirm a legal concept embedded in the new Article 147 - that is, to stop opponents with no real interest to use a mark in a specific market. Thus, the words "at the time of filing the opposition", or the Andean Court’s loose use of ‘simultaneous’ as a synonym of "at the time of filing the opposition", must be understood in legal terms. In other words, they must be interpreted as a moment in the procedure. It seems reasonable to contend that, if the time limit for filing an Andean opposition is 30 working days, then the period within which an opposition and an application can be filed should be 30 days.
Lastly, the abrupt implementation of the new procedure, the arbitrary and irrational definition of ‘simultaneous’, as well as other related failings, have been interpreted by some practitioners as an infringement of their right of defence. This has led some practitioners to file recourses before the Constitutional Court, which are still pending. The decisions of the court shall determine whether the right of defence of trademark owners has been affected. These decisions of the Constitutional Court will then give competence to the Andean Court to clarify the word “simultaneous’ in Resolution 105-IP, which ultimately relates to the meaning of the expression ‘at the time of’ in Article 147.
Juan Ignacio Zapata, Bolet & Terrero, La Paz
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