TRADEMARK IRREGISTRABILITY

Oscar David Reyes

Distinctiveness is the sense of purpose of the trademark system. A sign could not be registered if it does not individualize the products or services aimed to be distinguished, from those previously existent in the national market. Either it could be able to register a denomination that does not contain elements furnishing distinctiveness strength within its structure. In short, a sign without distinctiveness (intrinsic and extrinsic) should not be considered as trademark, because it fails to fulfill with the fundamental function distinctiveness has.

On this regard, the Tribunal of Justice of the Andean Community says:“The Doctrine has reiterated that trademark distinctiveness can be appreciated from two dos points of view: intrinsic and extrinsic. Therefore, for a sign to be covered by the trademarks right must be in itself able to distinguish the corresponding goods (intrinsic distinctiveness), and must be able to distinguish such goods from the others in the market (extrinsic distinctiveness). Only when the sign meets such conditions, it could help for a clear and fair trade competition for the benefit of the community”1

In the same sense, Art. 134 of Decision 486 states:
“With the object of this regime, a trademark will constitute any sign apt to distinguish products or services in the market. The signs subject of graphic representation might be registered as trademarks. The nature of the product or service to which a trademark is to be applied, in no case will be obstacle for its registration”.

Articles 135 and 136 of the Decision 486 of the Commission of the Andean Community contain the reasons why certain signs could not be registered as trademarks. The prohibitions established in Art. 135 are named absolute, and those contained in Art. 136 are named relative. This differentiation responds to intrinsic or extrinsic conditions. The causal of Art. 135 refer to conditions of the sign itself; to situations that necessarily should fulfill any denomination to be registered and to obtain the requisite of distinctiveness (not to be generic; not to be descriptive, etc.). In addition, they respond to reasons of public interest and to the tutelage of common wellbeing. Whilst, prohibitions of Art. 136 respond to the private interest of the businesspersons or titleholders of the trademarks, or to other prior rights, seeking to avoid the co-existence of similar or identical trademarks with those previously registered, or that might produce harm to pre-existent rights.

In the following lines, we will analyze the prohibitions absolute de registration, detailed in the Art. 135 de the Decision 486:
GENERIC CONDITION.- The generic denominations indicate a specific product or service; it is to say, are terms with which businesspersons designate the goods aimed to be protected with their denominations. For example, the word “hammer” is generic for a kind of tool. On the subject, the Tribunal of Justice of the Andean Community explains: "The condition of a word name to be generic, that legally prevents that it could be used as trademark, only results if such denomination can serve BY ITSELF, to indicate or identify the class of product or service in question, according with the language normally used in the market."