Andean Community court provides guidelines on likelihood of confusion

On April 1 2015 the Court of Justice of the Andean Community issued a preliminary interpretation following a request by the Fifth Peruvian Superior Civil Court Specialised in Competition and Intellectual Property Matters.

When trademark cases are at the judicial stage, judges may request that the Court of Justice of the Andean Community give a preliminary interpretation on any particular piece of legislation.

In this case, Representaciones Herov SRL filed for the registration of the trademark ACLICLAS (and logo) to cover goods in Class 14 of the Nice Classification. adidas filed an opposition against the application on the ground that it was confusingly similar to earlier trademarks registered in Class 25.

The Peruvian Trademark Office declared that the opposition was well founded, which was confirmed by the Administrative Court of Appeals. However, Herov filed a civil action requesting the annulment of the administrative resolutions. Herov based the civil claim on the grounds that:

• its trademark was not confusingly similar to adidas' trademarks, because the conflicting trademarks were not graphically and phonetically similar; and
• the trademarks covered goods in different classes which were not related, so the rule of specialty of trademarks should apply.

In first instance, the Civil Court rejected the claim. Herov then filed an appeal before the Superior Civil Court, which is now pending resolution.

Before issuing its decision, the Superior Civil Court requested that the Court of Justice of the Andean Community give a preliminary interpretation on how it should analyse and interpret the likelihood of confusion between identical or similar trademarks that cover different goods that fall in different classes, and the unjust use of the prestige of a notorious trademark and the dilution of its distinctiveness or commercial value by an identical or similar trademark covering different goods, according to the provisions of Decision 486 (the Andean Community's trademark statute).

In this case, adidas' trademarks, which were registered in Class 25, have been declared notorious according to the law.

The Court of Justice stated that it must first be proven that the trademark on which the opposition is based is notorious. The mark's notoriousness should be proven according to the rules of the Andean Community's trademark statute. If the trademark has been declared notorious, the courts should not take into consideration the rule of specialty of trademarks, because a notorious trademark transcends the rules of territoriality, specialty and use in commerce. A notorious trademark enjoys broader protection. Therefore, once a trademark has been declared notorious, there is no need to analyse whether the goods covered by the conflicting trademarks are related or not, or to discuss the rule of specialty of trademarks.

This preliminary interpretation thus provides the judge of the Superior Civil Court with guidelines on how to apply the law to this specific case.

Adriana Barrera, BARLAW - Barrera & Asociados, Lima