Court of Justice of the Andean Community [2021]: Preliminary Ruling 476-IP-2019
This is an informal case summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP Judges Forum.
Session 2: Emerging Issues in Industrial Designs
Court of Justice of the Andean Community [2021]: Preliminary Ruling 476-IP-2019
Date of judgment: Issued on September 10, 2021; published on September 10, 2021 (Official Gazette of the Cartagena Agreement N° 4336)
Issuing authority: Court of Justice of the Andean Community
Level of the issuing authority: Final Instance
Type of procedure: Judicial (Administrative)
Subject matter: Industrial Designs; Trademarks
Plaintiff: Crocs Inc.
Defendant: Evacol S.A.S.
Keywords: Andean law, Preliminary ruling, Industrial property, Non-traditional trademarks. Industrial design, Three-dimensional trademark
Basic facts: Crocs Inc. (Crocs) was the owner of the following three-dimensional trademark consisting of a clog-shaped rubber shoe:
Evacol S.A.S. (Evacol) was the owner of a registered industrial design on a model of clog-type rubber show, as shown below. It had traded products that were similar to those sold by Crocs for a number of years prior to the registration of the three-dimensional trademark by Crocs.
Held: The Andean Court does not resolve the specific case. This regional court interprets Andean law with the purpose of guiding the national judge, who must resolve the controversy raised in domestic law by applying the Andean Court´s interpretation of the applicable supranational law.
Relevant holdings in relation to emerging issues in industrial designs: Relevant holdings in relation to emerging issues in industrial designs: The legal criteria for determining the likelihood of confusion between an industrial design and a three-dimensional trademark are as follows:
1. It is possible for a three-dimensional creation to be protected by both an industrial design (because it is novel) and by a three-dimensional trademark (because it is distinctive). It is also possible that, regardless of the diligence or lack thereof exercised by industrial property offices, rights in an industrial design and a three-dimensional trademark are held by different owners, even when consisting in a similar object or product. If it is possible that a three-dimensional creation can be protected by both an industrial design (novel) and by a three-dimensional trademark (distinctive), it is also possible that both industrial property rights belong to different owners. Also, in theory, and regardless of the diligence or lack thereof of the industrial property offices, it is possible one person owns an industrial design and another one owns a three-dimensional trademark, with both industrial property rights falling on about a similar object or product
2. If the industrial design was registered first and products covered by said design have been traded on the market, it might seem strange that a three-dimensional trademark that is identical or similar to the aforementioned design is later registered, since the existence of the aforesaid products would introduce doubts about the necessary “distinctiveness” of the brand. If the registration of the three-dimensional trademark was first, it would also be strange if an industrial design identical or similar to said trademark is subsequently registered, since the existence of this trademark and the products distinguished by it in the market would make compliance with the “novelty” requirement of industrial design impossible.
3. Nonetheless, in some circumstances, it may arise that both an industrial design and a three-dimensional trademark relating to identical or similar goods are registered to different owners, regardless of the diligence or lack thereof of the IP office.
4. The risk of confusion between both industrial property rights could appear, for example, if a consumer, purchasing a product covered by the industrial design of company “A”, considers that this product has been manufactured by a company that sells similar products, but covered by a three-dimensional trademark registered in favor of company “B”. In other words, consumer choice in the market could be affected due to confusion regarding the business origin of a certain product.
5. In the event of a conflict between an industrial design and a three-dimensional trademark, in the sense that there is a likelihood of confusion in relation to the business origin of the products that are sold in the market and that are covered by both industrial property rights but held by different right-holders, the oldest registration must be priorized, in application of the “first in time, first in right” principle(prior in tempore, potior in iure).
Relevant legislation:
Decision No. 486 Establishing the Common Industrial Property Regime
(this Andean law is applicable in Bolivia, Colombia, Ecuador and Peru)