Supreme Court: two types of oppositions were available when country was part of Andean Community

Venezuela used to be part of the Andean Community, along with Bolivia, Colombia, Ecuador and Peru. However, on April 22 2006 Venezuela withdrew from the Andean Community by denouncing the Andean Subregional Integration Agreement (Cartagena Agreement).

Among the regulatory bodies of the Andean Community, the Commission issues decisions which are compulsory and apply in preference in each country of this integrated system, due to the principle of supranationality. Article 55 of the Cartagena Agreement provides for a common harmonised IP system: “The Andean Community shall have a common system for the treatment of foreign capital and of trademarks, patents, licences and royalties, among other things.”

Decision 344, which came into force on January 1 1994, stated that an interested party could oppose a trademark application on any of the grounds included in that decision. It was replaced in 2000 by Decision 486, which complies with all the obligations under the Agreement on Trade-Related Aspects of Intellectual Property Rights. Both Decision 344 and Decision 486 state that oppositions are decided by the relevant Trademark Office.

On the other hand, on December 10 1956 the National Congress of Venezuela passed the Industrial Property Act, which establishes that trademark oppositions that are based on the ground of prior use (also known as 'better rights' oppositions) must be decided by the civil courts.

For many years, it was debated whether the Industrial Property Act's 'better rights' oppositions were available whilst Venezuela was a member of the Andean Community, as the Commission's decisions were compulsory and applied in preference.

This matter was recently addressed by the Supreme Court in a ruling issued on June 17 2014 (File No 2014-0121, Justice Emilio Ramos Gonzalez).

In this case, the first instance civil court had declined to decide a case in which a Venezuelan citizen had filed, back in 1998, an opposition on the ground of prior use against a trademark application for COBRA (and device). The first instance court had stated that, when the opposition was filed, the compulsory regulation was Decision 344 and, therefore, the case was to be decided by the Trademarks Office, rather than the courts, as stated in Decision 344. The court declined to compete with the Trademarks Office and agreed to consult the Supreme Court in this respect.

The Supreme Court stated that, during the period when Venezuela was part of the Andean Community, there were two different types of oppositions, which were both valid:

1. oppositions decided by the Trademarks Office and filed on the grounds stated in the Andean Community decisions, such as descriptiveness, likelihood of confusion with a prior application or registration, and violation of morality and public order; and
2. oppositions based on a jus ad rem, such as prior use, under the Industrial Property Act, which were to be decided by the civil courts.

The Supreme Court ordered the lower court to decide the opposition on the ground of prior use.

Ricardo Enrique Antequera, Estudio Antequera Parilli & Rodríguez, Caracas