What signs cannot be registered?

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In article 135 of Decision 486 of the Andean Community are pointed out the grounds of absolute denial, i.e. general interests for denial:

– Non-compliance with article 134: Cannot constitute a trademark according to article 134 of Decision 486 of the Andean Community;
– Not distinctive: Lacks distinctiveness;
– Everyday shape: Consists solely of the everyday shape of the goods or their packaging, or of shapes or characteristics dictated by the nature or function of the product or service concerned;
– Shape functional or technical advantage: Consists solely of shapes or other elements that afford a functional or technical advantage to the product or service to which they are applied;
– Descriptive: Consists solely of a sign or statement that may serve in business to describe the quality, quantity, purpose, value, place of origin or time of production of, or to impart other data, characteristics or information concerning, the products or services for which the sign or statement is to be used, including expressions extolling the said goods or services;
– Generic or technical: Consists solely of a sign or statement which is the generic or technical name of the product or service concerned;
– Common use: Consists solely or has become the common or usual designation for the product or service concerned in the everyday language or usage of the country;
– Color isolation: Consists of a color in isolation, without any demarcation to give it a specific shape;
– Deception: Is liable to deceive business circles or the public, in particular as to the source, nature, manufacturing methods, characteristics or qualities of the goods or services concerned, or its suitability for its purpose;
– Appellation of origin: Reproduces, imitates or contains a protected appellation of origin for the same or different goods where use of the sign could create a risk of confusion or association with the said appellation, or might constitute misappropriation of its notoriety;
– Contains a protected appellation of origin for wines and spirits;
– Geographical indication: Consists of a national or foreign geographical indication liable to cause confusion regarding the goods or services to which it applies;
– Imitation state’ signs: Reproduces or imitates, without the permission of the competent authorities, either as trademarks or as elements of trademarks, coats of arms, flags, emblems or official signs and marks denoting control and warranty adopted by States, and any imitation thereof from the heraldic point of view, and also the coats of arms, flags and other emblems, names or abbreviated names of any international organizations;
– Technical standards: Reproduces or imitates signs denoting conformity with technical standards, except where the registration thereof is applied for by the national body responsible for standards and quality requirements;
– Plant variety: Reproduces, imitates, or includes the denomination of a plant variety protected in a member country (Bolivia, Colombia, Ecuador, or Peru) or abroad, if the sign is intended for goods or services related to that variety, or where such use would be liable to cause confusion or association with it;
– Against law, etc.: Is contrary to law, morality, public policy or proper practice.

Despite the provisions “not distinctive”, “descriptive”, “generic”, “common use” or “color isolation”, a sign may be registered as a trademark if the person applying for registration, or his principal, has been making constant use of it in the member country, and where the effect of such use has been that the sign has acquired distinctiveness in relation to the goods or services to which it has been applied (second meaning – Theory of Acquired Distinctiveness).

It should be known that registration applications for distinctive signs due to acquired distinctiveness demand a vast evidence material that supplies the necessary conviction to aim at the direct identification by the consumers as a trademark in the market.

In article 136 of Decision 486 of the Andean Community you find the relative grounds, i.e. particular grounds, for denial:

– Risk of confusion with prior trademark: They are identical or similar to a mark previously filed for registration or registered by a third party in respect of the same goods or services, or for goods or services regarding which the use of the mark could cause a risk of confusion or association;
– Risk of confusion with trade name: They are identical or similar to a protected trade name or a label or business sign, in so far as they might, under the circumstances, create a risk of confusion or association;
– Risk of confusion with slogan: They are identical or similar to an advertising slogan filed for registration or registered, in so far as their use might, under the circumstances, create a risk of confusion or association;
– Distributor: They are identical or similar to the distinctive sign of a third party, in so far as their use might, under the circumstances, create a risk of confusion or association where the applicant is or has been a representative or distributor of, or a person expressly authorized by, the owner of the sign protected in the member country or abroad;
– Image right: They consist of a sign that affects the identity or prestige of profit-making or nonprofit-making legal entities, or natural persons, including especially the forename, surname, signature, title, hypocoristic, pseudonym, likeness, portrait or caricature of a person other than the applicant or identified by the relevant sector of the public as a person other than the applicant, except where the consent of that person or, if he is deceased, that of those declared his heirs is proved;
– Copyright: They consist of a sign that infringes the industrial property rights or copyright of a third party, except where the consent of the latter has been obtained;
– Indigenous Afro-American or local community: They consist of the names of indigenous Afro-American or local communities, or the names, words, letters, characters, or signs used to distinguish their goods or services, or the manner of their processing, or which constitute an expression of their culture or practice, except where the application is filed by the community itself or with its express consent; and
– Top of mind: They constitute a reproduction, imitation, translation, transliteration or transcription of all or part of a well-known distinctive sign the owner of which is a third party, regardless of the goods or services to which the sign is applied, where their use would be liable to create a risk of confusion or association with that third party or with his goods or services, constitute misappropriation of the prestige of the sign or dilution of its distinctive power or commercial or advertising value.