The figure of the Andean Opposition emerged from the need to improve the protection of trademarks in the member countries of the Andean Community, composed of Bolivia, Colombia, Ecuador, and Peru. Entrepreneurs who already had a trademark application or registration in one of the member countries sometimes saw their expansion plans in the community's territory limited by the existence of identical or similar trademarks owned by third parties.
Facing this situation, it was necessary to implement a mechanism of protection and defense that included the member countries of the Andean Community. That is how in 1993 with Decision 344 the figure of the Andean Opposition appeared for the first time and has been perfected by Decision 486 of 2000.
What is the Andean Opposition?
It is a legal figure that allows the holder of a trademark registration or application in one of the countries of the Andean Community to oppose the registration of a trademark in another member country.
The Andean opposition must comply with specific requirements, among them the accreditation of a real interest that the entrepreneur must have in the market of the member country where the opposition is intended to be filed.
How is the real interest in the market of the member country accredited?
This requirement is satisfied by filing an application for registration of the opposing mark in the member country, simultaneously with the filing of the opposition and within the period of publication of the mark to which the objection is to be filed.
Compliance with this requirement is based on avoiding the abuse of the right of opposition, which would hinder the registration of trademarks based on the defense of signs that would not have a clear participation in the local market, so it is the duty of the opponent to prove that, in effect, they are interested in making commercial incursions in this country.
Does the registration of a trademark in a member country of the Andean Community ensure its protection in the other member countries?
Now, it should be remembered that each national office has autonomy in the examination of registrability, so it is not possible to guarantee that, if an application for registration was previously granted in a member country of the Andean Community, its protection will be granted in the other countries and the trademark must necessarily be denied based on the Andean Opposition. Each trademark office must independently review whether or not the registration requirements are met.
This is how we reach one of the most critical points of the Andean Opposition procedure since the national office must suspend the registration proceedings subject to the opposition until the opposing mark applied for earlier in another jurisdiction has been decided, thus causing immobility.
What is the Protocol for the management of cases with Andean Opposition?
It is for this reason that the trademark offices belonging to the Andean Community have developed a Protocol that came into force last March 1, 2023. In order to speed up these proceedings and reduce their inactivity, the Protocol foresees permanent and efficient communication between the trademark offices of the Community, which may offer and/or request information on the status of the trademark registration procedures, as well as share important documentation that may influence the management of a prompt decision.
In view of the first appearance of the Andean opposition in 1993, we can say that nowadays entrepreneurs can count on a legal figure that is getting closer and closer to a perfected process, aimed at the protection and defense of their trademark registrations within the territories of the Andean Community.
