by Joaquim Eugenio Goulart
July 01, 2003
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In a recent decision involving the Italian trademark "CANALI" in Colombia, the Andean Court of Justice requested to the State Council to render a pre-judicial interpretation of the provisions related to well-known trademarks of the Cartagena Agreement. This opinion was quite important since it will certainly serve as a guideline to the Andean Community to analyze when a trademark can be considered as well-known under the Agreement’s provisions.
The Cartagena Agreement is a regional Industrial Property arrangement ratified by Bolivia, Colombia, Ecuador, Peru and Venezuela. According to its Article 224 (Decision 486 of September 14, 2000) a well-known distinctive sign is understood to mean a sign that is recognized as such in any member country by the pertinent sector, independently of the way or means by which it was made known. It is possible to perceive from Article 224 of the Cartagena Agreement that the protection is not limited to well-known marks. It also covers, for instance, trade names and personal names of famous individuals. Title XIII of the Cartagena Agreement even goes beyond WIPO Joint Recommendation concerning provisions on the protection of well-known marks.
Article 228 establishes a list of criteria in order to determine whether a distinctive sign is well-known. "Some of the criteria refer to registration and use of the sign outside the Member Countries, which shows that internationally well-known distinctive signs may still be protected" (see Kunze, Gerd F., International and Comparative Trademark Law, Chapter III, page 9).
The scope of protection under the Cartagena Agreement is broader than under both Paris Convention and TRIPs, since it provides rights to the well-known trademark owner against the use of conflicting marks, without registration and use (in the country where the protection is claimed), and even if the mark is not well-known in any of the member countries ("internationally well-known").
As mentioned, in deciding the case of the Italian company Canali S.P.A., the Andean Court of Justice requested to the State Council to issue a pre-judicial opinion providing with an interpretation of the concept of well-known signs inserted in the Cartagena Agreement. In doing so, the Council stated that: i) a well-known trademark is one that has been widely disseminated among a given group of consumers; ii) for a mark to be declared well-known, it does not have to be used, it just has to be known. This knowledge can be due to a continued and systematic use of the mark or to its advertising. Use and knowledge do not have to be simultaneous; iii) in the Andean Community, the prohibition to register signs that are similar to well-known trademarks applies regardless of the class, and whether they seek to cover the same products or services covered by the well-known trademark or other products or services; and iv) the well-known character of a trademark is declared by the authorities and not by the parties to the proceedings or by its owner (see World Intellectual Property Report, Vol. 16, Number 12, Dec. 2002, page 5).
In the end, the Council of State identified that CANALI trademark could be considered as a well-known trademark, according to the rules of the Andean Community, and declared the cancellation of the registration obtained in Colombia, for the same mark, by Textron Ltda.
The broader concept of well-known trademarks can also be found in other different agreements ratified by Latin American States. According to the General Inter-American Convention for Trade Mark and Commercial Protection of Washington (ratified by the U.S.A., Colombia, Cuba, Guatemala, Honduras, Nicaragua, Panama and Peru), the owner of a mark protected in one of the contracting states can oppose against any one using, or applying to register an interfering mark (Article 7). Upon proof that the person had knowledge of the existence and continuous use in any of contracting states of the opposing mark on goods of the same class, the opposing party can claim a preferential right to use mark in the country where the opposition is filed and priority to register the mark in that country. Furthermore, "Article 8 establishes that if the owner of a mark in one of the contracting states seeks registration in another contracting state than that of the origin of the mark and the registration is refused because of the registration or deposit of an interfering mark, the owner can obtain cancellation of the interfering mark upon proof that he enjoyed legal protection in the other contracting state prior to the interfering mark under some conditions" (see Kunze, Gerd F., International and Comparative Trademark Law, Chapter III, page 5). This protection is broader than the special one provided for well-known marks, but with a limited scope to the member countries.
A similar provision is found in the Protocol of Harmonization of Rules within the Mercosur (Argentina, Brazil, Paraguay and Uruguay – both Argentina and Brazil have not ratified the treaty yet). Article 8 of the Mercosur Agreement establishes that the first to file will have preference for obtaining the registration of a trademark, except when such right is claimed by a third party which has been using it publicly, pacifically and in good faith, in any member state, for a minimum period of six months provided that it applies for registration of the trademark when filing its objections. Furthermore, Article 9.4 states that the member states will prohibit in particular the registration of any sign which imitates or reproduces totally or partially a trademark that the applicant evidently could not claim ignorance of as belonging to an owner established or domiciled in any other member state and likely to cause therewith confusion or association. Article 9.5 reproduces and extends the provision of Article 6 bis of the Paris Convention, and Article 9.6 sets out that the member states will provide in their territories protection for trademarks of nationals of other member states, which have acquired a degree of exceptional reputation against their reproduction or imitation in any branch of business, whenever there is possibility of suffering damages (see also the rights granted by a registration in Article 11).
In spite of the fact that the Mercosur Agreement has not been ratified by Brazil yet, the Brazilian Industrial Property Law (BIPL) has also expanded the usual protection for well-known trademarks. According to Article 125 of the BIPL, marks registered in Brazil and considered to be famous will be guaranteed special protection, in all fields of activity. On the other hand, Article 126 establishes that marks that are well-known in their field of activity in the terms of Article 6 bis (i) of the Paris Convention will enjoy special protection, independently of whether they have been previously filed or registered in Brazil.
In a very recent decision of the Brazilian Superior Court of Justice, the trademark "ALL STAR" has been declared well-known in its field of activity (international class 25) and the registration for the same mark made by a Brazilian corporation has been cancelled. The Court understood that, despite the Brazilian company has been using this sign for several years in the country, the international fame of the trademark "ALL STAR" had to be taken into consideration and, therefore, the legitimate owner of the trademark in Brazil is the U.S. corporation that first developed the sign abroad.