Court of Justice of the Andean Community [2022]: Preliminary Ruling 81-IP-2020
This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.
Session 1: Emerging Issues in Trademarks
Court of Justice of the Andean Community [2022]: Preliminary Ruling 81-IP-2020
Date of judgment: Issued on May 6, 2022; published on May 13, 2022 (Official Gazette of the Cartagena Agreement N° 4467)
Issuing authority: Court of Justice of the Andean Community
Level of the issuing authority: Final Instance
Type of procedure: Judicial (Administrative)
Subject matter: Trademarks
Plaintiff: Hewlett Packard Enterprise Development LP
Defendant: National Institute for the Defense of Competition and Intellectual Property of the Republic of Peru (Indecopi)
Keywords: Non-traditional trademarks, Three-dimensional trademark
Basic facts: Whether the three-dimensional sign shown below, which was the subject of an application for registration by Hewlett Packard Enterprise Development LP, possesses intrinsic distinctiveness to allow the consuming public to identify it with the products it intends to distinguish, and whether the sign could serve to distinguish a specific business origin.
Held: In line with its mandate, the Andean Court provided the following interpretation of Andean law in relation to the examination of the registrability of three-dimensional trademarks, for the purpose of guiding the national court that will adjudicate the dispute raised in domestic law.
Relevant holdings in relation to emerging issues in trademarks [specifically, non-traditional trademarks]: The examination of the registrability of three-dimensional trademarks must be carried out taking into account the following parameters:
1. Commonly used shapes of the relevant goods (that is, the shape of the products or their packaging that are used by some of the existing competitors) must be identified and excluded from the analysis. It is not necessary that they be of common use by all competitors; it is enough that they be used by a group or percentage of them.
For example, if a group of beer-manufacturing competitors uses a bottle shape to package the product, said shape cannot be considered a three-dimensional trademark, since there are already competitors that use it in the market, which makes it a commonly used shape.
2. Those shapes that are indispensable or necessary in relation to the products or their packaging must also be identified and excluded. These are those shapes that have a technical function in relation to the product or its packaging. For example, in the case of beer bottles, they must necessarily have a lid or a cap that secures the content.
3. Notwithstanding the foregoing, if the exclusion of the above elements has the effect of reducing the sign in such a way that it renders the analysis inoperative, the sign must be analysed as a whole.
4. The examination should be done based on the elements that provide distinctiveness in each case, such as shapes, lines, perspectives, reliefs, angles; that is to say, the inclusion of arbitrary or special elements that cause a different impression from that obtained when observing other distinctive signs or industrial designs, and which serve to distinguish it from others that are commercialized in the market.
5. Accessory elements such as labeling should not be taken into account.
Additional criteria:
1. In order to register a three-dimensional shape as a trademark, the shape itself must allow consumers to associate the sign with a certain business origin. If this does not happen, the distinctiveness could come from denominative or figurative elements (words, numbers, drawings, colors, graphics, etc.), in which case it would be considered as a mixed sign, whereby the three-dimensionality is one of its components.
2. A mixed sign could consist of either a denominative element and the three-dimensional component; a figurative element and the three-dimensional component; or the denominative and figurative elements and the three-dimensional component. In any case, the distinctiveness would come from the perception of the brand set in its entirety.
Relevant legislation:
Decision No. 486 Establishing the Common Industrial Property Regime (this Andean law is applicable in Bolivia, Colombia, Ecuador and Peru)