The trademark registration system in the Andean Community has evolved over time, allowing both oppositions to improper registrations and the possibility of registering trademarks in multiple classes. This article explores the right of opposition under Decision 486 and the adoption of the multi-class trademark system within the region.
The Right of Opposition in Trademark Registration
The right of opposition allows any person with a legitimate interest to prevent the registration of a trademark if they believe it infringes on their rights. According to Article 147 of Decision 486, owners of identical or similar trademarks in member countries can file oppositions when the use of a trademark may mislead the public. For an opposition to be valid, the opponent must demonstrate their interest in operating in the market of the country where the opposition is filed and, in many cases, must submit a registration application for the disputed trademark.
Types of Opposition
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Based on a previously registered trademark:
If a trademark is already registered in any member country, the trademark office may reject a new registration application that conflicts with the existing one. -
Based on a prior registration application:
If the opposition is based on a previously filed application in a member country, the trademark office will suspend the second trademark registration until the first application is resolved.
Deadlines and Requirements for Filing an Opposition
If an opposition is filed, the national office will notify the applicant, who will have 30 days to respond and provide evidence. At the request of the interested party, this period may be extended once for an additional 30 days.
Cases Where Opposition Is Not Accepted
The trademark office will reject an opposition if:
- It does not contain essential information about the opponent or the challenged application.
- It is filed after the deadline.
- The corresponding fees have not been paid.
Multi-Class Trademark Registration: A Growing Trend
Traditionally, trademark registrations followed a single-class system, meaning each application could only apply to one category of goods or services. However, with the adoption of Decision 689, multi-class trademark registration was introduced, allowing applicants to include multiple classes within a single application.
Characteristics of the Multi-Class System
- Applicants can register goods and services in multiple classes under a single application.
- It is necessary to clearly specify which goods and/or services will be protected, grouping them according to the Nice International Classification.
- A multi-class application can be divided into multiple individual applications during the registration process while retaining the original filing date.
This change was driven by Peru’s obligation to adhere to the 1994 Trademark Law Treaty as part of the Trade Promotion Agreement (TPA).
Comparison with International Legislation
Different countries have adopted different approaches to trademark registration:
- Chile: Only allows applications for specific products or services, indicating the corresponding class.
- Uruguay: Does not allow expanding trademark protection once an application has been filed, but permits limiting it by removing classes.
- Dominican Republic: Requires all applications to include a list of products or services with their corresponding classes.
- European Union: Allows applications for all 42 classes of the Nice International Classification, with a base fee covering the first three classes and an additional fee for extra classes.
- Mexico: Does not explicitly establish a single-class system, meaning multi-class applications are generally allowed.
Why Is the Transition to the Multi-Class System Important?
The single-class system was incompatible with global trends in trademark protection, leading to its gradual modernization in the Andean region. The adoption of the multi-class system:
✔ Facilitates trademark management
✔ Reduces administrative costs and processing times
✔ Aligns Andean legislation with international standards
Conclusion
The right of opposition and the adoption of multi-class trademark registration represent significant advancements in trademark law within the Andean Community. While the former protects the rights of trademark owners against improper registrations, the latter modernizes the system, making it more efficient for protecting trademarks across multiple industries. With these changes, the region aligns with international best practices, benefiting both businesses and entrepreneurs.
