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Barreda Moller writes...

Scope of foreign language words in the registrability examination of trademarks, in light of the prejudicial interpretation issued in Proceeding 252-IP-2016

At request of the national judges of the Andean Community member countries, the Court of Justice of said Community interprets the rules that constitute the legal system of the subregional group to guarantee the uniform application and interpretation of the Andean law. Truth is, in no way minimizing the importance of the prejudicial interpretation, that this Court’s interpretation is of mandatory compliance in the case with respect to which the competent judge has requested the interpretation.

It is a rule supported by our country’s case law, that the marks composed of one or more words in foreign language, which meaning is not widely known, are considered fanciful in the registrability analysis of trademarks. In this respect, the Court of Justice of the Andean Community has established that it must be taken into account “what actually occurs in the market”, being applicable to this analysis the “principle of primacy of reality”. This implies determining whether average consumers, who are target of the goods or services concerned, understand or not the meaning of the words in foreign language.  It is clear that, if those consumers perfectly understand the meaning of such words, the treatment that the foreign language word will receive will be the same as the treatment the word in Spanish language would receive.

But, which is the criteria to be applied to verify if the meaning of a word in foreign language is widely known in the sector of consumers to which the goods or services are addressed?

The Court of Justice of the Andean Community has given opinion in this respect in Proceeding 252-IP-2016, identifying criteria that, it remarks, are not restrictive:

-       Phonetic and semantic proximity of the foreign language with Spanish.  It includes marks composed of words which have the same meaning in more than one language.  It also includes words which writing slightly differs but which meaning is easy to understand.

-       Intensity of the teaching of the foreign language in the member country in which the registrability analysis is performed. It is pertinent to find out if the teaching of the foreign language is part of the public and private school curricula and all the policies are underact for these process actionsolar.net.  If this is the case, it must be determined if the word in foreign language can be understood by the majority of consumers who have a basic knowledge of the language. Thirdly, it must be determined if the target consumers would have a basic knowledge of the language.

-       If the word in foreign language is used by the majority of companies to describe a characteristic of the good or service and/or if it is used in the distribution or commercialization of the good or service, for example, in advertising.

-       Use of the word in foreign language, in the structure of other distinctive marks.

-       Use of the word in foreign language in mass media and social networks.

-       Foreign words which are commonly used by the general population.

Since the aforementioned criteria is not restrictive, the national Authority will be able to carry out surveys to determine if the word in foreign language is, or is not, known by the majority of consumers of the goods or services concerned.

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