Colombia: The Lack Of Distinctiveness Of A Mark Not Only Affects Consumers But Also Free Competition

The lack of distinctiveness of a mark and the confusion it can generate, besides affecting consumers, is contrary to the free competition that must prevail among entrepreneurs, as sentenced by the Andean Court of Justice ¹.

"The Andean community regime on trademarks intends to protect both entrepreneurs and consumers, assuring that the former not be the object of unauthorized imitations or use of their registered trademarks and that the consumers will not be affected by defects in consent generated by confusing similarity", added the Court.

Consequently, the competent trademark offices of Colombia, Venezuela Ecuador, Perú and Bolivia must verify if the mark whose registration is applied, is identical or confusingly similar to a mark, commercial name or commercial slogan previously applied for registration or registered by a third party.

Specifically, the Andean Court of Justice quoted Article 83 of Decision 344 (which is quite similar to Article 136 of Decision 486, which is currently in force), which provides that are not registrable as marks the signs "being similar or identical in such a way as to induce the public to error, to a mark previously applied for registration or registered by a third party, for the same products or services, or for products or services in regards to which the use of the mark could induce the public to error."

This provision, as explained by the Andean Court, not only forbids direct confusion, that is the one generated by the plain comparison of the marks, but also indirect confusion, that is, the confusion caused when the public believes that the products having identical or similar marks come from the same entrepreneur.

In this sense, the Andean Community law prohibits trademark confusion, not only among all the products and services identified with a similar trademark, but it also forbids confusion in regards to "a whole group of products or services that may have some competitive connection, even though they be identified in another class of the international classification".

The Andean Court then advised all the national competent offices in the Andean Community that for determining confusion between two marks, a study should be implemented not only in regards to the trademark examination of identical goods, but it also should cover the examination of goods that could generate confusion with the relevant mark.