Resolution outlining protection available to well-known marks issued

The Andean Court of Justice has issued a resolution on the interpretation of Andean Community Cartagena Agreement Committee Decision 344 on a Common Industrial Property Regime in relation to well-known marks (Resolution 108-IP-2006, published December 7 2006). Decision 344 has been replaced by Andean Community Decision 486 on a Common Industrial Property Regime, but the latter also refers to well-known marks and thus the Andean Court of Justice's resolution has important implications for Decision 486.

The court explained that are two types of well-known trademarks, namely notorious marks and renowned marks. The court noted that Decision 344 (and Decision 486) does not make a clear distinction between these types of marks and therefore provided its own interpretation. It stated that 'notorious marks' are those known only to consumers of the goods or services identified by such marks. 'Renowned marks', on the other hand, are known to the general public, even if they are not consumers of the products or services identified by such marks.

Decision 344 gives well-known signs a broad level of protection without making a distinction between notorious and renowned marks. The effect being that notorious trademarks are protected in the same way as renowned marks. The court therefore suggested reducing the level of protection available for notorious marks.

The court stated that the administrative authorities throughout the Andean Community must apply strict criteria when determining the level of fame of a mark. It determined that if a trademark reproduces, imitates, translates or transcribes a renowned mark, protection will be available without the need to analyze whether there is a risk of confusion. Renowned marks will be protected even if the later mark covers goods and services other than those identified by the renowned mark. It reasoned that notorious marks should obtain a lower level of protection, which should include an examination of a likelihood of confusion.

José Barreda, Barreda Moller, Lima