Constitutional Court upholds legality of trademark renewal provisions

Bolivia’s Constitutional High Court has put an end to a trademark pirate's latest attempt to steal a famous mark. In doing so, the court settled a matter which, for quite some time, has had practitioners wondering about the legality of the current provisions on trademark renewals.

In inter partes proceedings - in which the parties have already gone through at least five legal processes and obtained 12 decisions (including several appeals), the Constitutional Court upheld the legality and constitutionality of the Trademark Law and its bylaw.

This case concerned the repeated attempts by a trademark pirate to 'snatch' a world-renowned trademark, owned by a US company, through various procedural twists and abuses. In its most recent attempt, the pirate argued that the US company’s renewal of its trademark did not conform to the provisions of Administrative Law 2341 and, therefore, the US company’s right to renew the mark had lapsed.

In particular, the pirate maintained that Administrative Law 2341 provided for a five-day window in which applicants must submit all filing documentation (eg, powers of attorney). The pirate argued that this statute took pre-eminence over any other statute, and, consequently, any provision that conflicted with Law 2341 was unconstitutional.

Through this procedural argumentation, the pirate sought to have the renewal of one of the most famous brands in the food and entertainment industry declared lapsed and null and, as a result, have its own trademark application (which replicated the famous brand) mature into registration. This, effectively, would amount to 'stealing' the famous mark.

Earlier attempts to impede the renewal process of the famous mark before the Trademark Office had proved unsuccessful and, therefore, the pirate raised a claim of unconstitutionality, which essentially questioned the validity of all renewal processes in the country. The claim of unconstitutionality did not delve into the details of the particular renewal process at issue, but challenged the validity of Decision 486 (ie, the Trademark Law) and its bylaw, which - not specifically but impliedly - allow for the submission of renewal documentation (and, especially, powers of attorney) at any time during the renewal process. In fact, the Trademark Law and its bylaw allow the de-archiving of the trademark renewal process and the continuation of that process, even if a formal requirement to file a document has not been met during the stipulated period of time.

The case thus pitted Law 2341, and its five-day window to submit documentation, against Decision 486, and its open-ended window to submit documentation. The pirate’s petition entailed that thousands of renewals - either granted or in the process of being granted - could be declared null and void for failure to meet the formal requirements of Law 2341. Therefore, thousands of marks could become available and be registered by the first party to submit a fresh trademark application. At a time when franchises are flocking to South America due to a prosperous economic environment, such legal insecurity would have had a devastating effect on franchisors and franchisees alike.

In Constitutional Decision 0406/2013-CA //04661-2013-10-AIC and 0382/2013-CA//04662-2013-10-AIC, Bolivia’s Constitutional High Court rejected the pirate’s petition of unconstitutionality and dismissed its claim.  Decision 486 and its bylaw were thus held to be constitutional. 

Notably, the following precepts were held to be essential constitutional concepts:

• an international treaty, such as Decision 486, is hierarchically above any national law, such as Law 2341; and
• a specific law, such as Decision 486 and its bylaw, must be applied over any conflicting general provision, such as Law 2341.

This important decision has dealt yet another blow to the pirate and, most significantly, has quietened voices - even among the personnel of the Trademark Office - which were sending out confusing signals and opinions regarding this critical issue.

Juan Ignacio Zapata, Bolet & Terrero, La Paz