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Details of the Andean Opposition Protocol

By: Miguel Rujana

March 23, 2023

Within the framework of the sessions of the administration program of the United States Patent and Trademark Office (USPTO), developed between February 6 and 10 of this year, the directors of the Superintendence of Industry and Commerce (SIC) of Colombia, the National Service of Intellectual Rights (SENADI) of Ecuador and the National Institute for the Defense of Competition and Protection of Intellectual Property (INDECOPI) of Peru, announced that as of March 1, 2023, a protocol for the management of Andean oppositions in mark matters will come into operation.

The Andean opposition is found in article 174 of Andean Decision 486 of 2000. Its purpose is to grant any holder or applicant of a mark registered or applied for in any of the member countries of the community (currently Bolivia, Colombia, Ecuador, and Peru) the possibility of opposing a mark application filed in any other country of the community. This is an expression of Community law and its cross-border scope.

Thus, this protocol responds to the search to consolidate the integration purposes and economic and social cooperation that gave rise to the Andean community.

In practical terms, the protocol focuses on defining an effective process for the detailed information exchange between INDECOPI, SENADI, and SIC, regarding the status of cases in each country, related to the opposition process (trademarks, pending applications, cancellation actions, etc.) to promote their quick resolution.

The protocol is composed of 6 steps:

1.- Each office shall designate a responsible person/liaison officer for the provision of information relating to the cases related to.

2.- When an opposition is filed under article 147 of the decision or it is known that the opposing mark has been subject to a cancellation action, the liaison officer of the office where the opposition is being processed shall write to the liaison officer in the relevant office requesting information on the status of the linked files/cases.

Thus, for example, if a mark applicant in Colombia files an Andean opposition against a mark application in Peru, the resolution of this case by INDECOPI shall be suspended.

According to the procedure, the INDECOPI liaison officer shall write to the SIC liaison officer, requesting the information corresponding to the details and status of the mark application in Colombia.

3.- To the extent possible, the liaison officer receiving the application will provide the information within ten working days from the date of receipt of the application.

4.- Within the same term, the liaison officer receiving the application for information will contact the person responsible for the process in the corresponding office to request its prompt resolution.

Thus, in our example, the SIC liaison officer shall contact the professional in charge of the mark application in Colombia, requesting its prompt resolution.

If the matter cannot be resolved promptly, this situation shall be reported, including the corresponding justification.

5.- Each member country shall issue a quarterly report informing progress on cases for which information has been requested in the protocol context.

6.- Regardless of the quarterly report, upon the issuance of a final substantive decision at the administrative step, in any of the matters whose resolution impacts the opposition process, the liaison officer shall immediately inform the office where the proceeding is being processed.

Returning to our example, once the granting of the mark in Colombia is decided, the SIC shall inform INDECOPI to lift the suspension of the Peruvian process and continue with the proceedings.

In conclusion, the protocol seeks to establish direct communication channels between the signatory offices, to streamline and make more efficient the processes of mark registration and other associated procedures, for the benefit of applicants and owners of industrial property rights over distinctive signs.

If you have any particular doubts regarding this subject, you may contact our experts by sending an e-mail to infomarketing@clarkemodet.com. We are ready to help you!

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