Requirements for cancellation based on well-known mark clarified
The Colombian Trademark Office (TO) has established the list of requirements to cancel a registration on the grounds that an identical or similar mark was well known at the time of application (Resolution 8538).
While considering whether the mark FINO for edible oils should be cancelled on the basis that the mark LA FINA for margarine was well known at the time FINO was registered, the TO assessed the criteria set out in Andean Community Decision 486 on a Common Intellectual Property Regime on the issue of cancellation based on a senior well-known mark.
Article 235 of Decision 486 states that, where national legislation allows, a registered trademark may be cancelled if it is identical or similar to one that was well known, according to the legislation in force, at the time registration was applied for. The TO added the following criteria: (i) the party filing the action must be the owner of the well-known mark on which the action is based - parties authorized to use the mark, such as distributors and franchisees, may not file such a cancellation action; and (ii) the fame of the mark on which the action is based must also be demonstrated at the time the cancellation action was filed (fame must be evidenced for any of the member states of the Andean Community and according to the parameters established in Article 228 of Decision 486).
This last requirement is not expressly included in Article 235 of Decision 486, but is backed up by a ruling of the Andean Community Tribunal (8-IP-98, March 13 1998). The TO decided to add the requirement to ensure that the party filing the cancellation action proves that it still has a legitimate interest to do so.
It is important to stress that all three requirements must be present for the applicant to succeed. In the case of LA FINA and FINO, the TO found that the marks are not confusingly similar and, thus, can peacefully coexist in the market.
Valerie Fritz Villamizar, Alvaro Castellanos M & Cia, Bogota
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