On August 25 the Court of Justice of the Andean Community issued a prejudicial interpretation regarding the Claim Against Infringement of Industrial Property Rights and the deadlines that trademark owners must comply with to access this protection. In its interpretation, the Court reminded that the owner of a trademark registration has the right, among others, to prevent third parties from making commercial use of an identical or similar sign, without their authorization, in relation to any product or service when it presents a risk of confusion or association among consumers with respect to the owner of the trademark. In this case, the owner of the trademark may initiate the Claim Against Infringement of Industrial Property Rights. However, it is important to make use of this protection as soon as the infringement becomes known, since in order to protect the principle of legal certainty in the market, this claim expires, as such it is not possible to take legal action at any and all times.

Decision 486 of the Andean Community Commission in its article 244 establishes that this claim has an expiration period of two years from the moment in which the owner of the trademark became aware of the infringement or five years after the infringement was last committed. After the expiration of these terms, the claim becomes unenforceable. In this regard, the Court of Justice of the Andean Community clarified that the two-year term is calculated from the time the rights holder became aware of the infringing act, regardless of the type of infringement in question. On the contrary, for the five-year term the type of infringement committed must be taken into consideration. Consequently, depending on whether it is an instantaneous, continuous, permanent, or complex infringement, the date from which the five years will be calculated varies as follows:

• Since instantaneous infractions require only that a single act that configures the infringement be performed, the term is computed from the moment in which the act is consummated.
• Regarding continuous infringements, which are understood as identical acts that are continuously repeated over time and that are part of a single process, the expiration term is calculated from the date of completion of the last identical act.
• In the case of permanent infractions, or single acts that have a prolonged duration in time, the term of five years is calculated from the moment in which the conduct ceases.
• Finally, complex infringements, which are series of multiple acts whose purpose is to achieve a single purpose, the term is computed from the date of completion of the last act that consummates the infringement.

Finally, it is important to bear in mind that if the owner of the trademark does not initiate the claim within the two-year term from when they became aware of the infringement, they will not be able to resort to the five-year term, since the assumptions that allows its initiation are different. Therefore, if the defendant proves that the owner already knew about the infringement, they may invoke the expiration of the claim which will then be unenforceable, generating the impossibility of resorting to the five-year expiration term.

If you or your company are facing a possible trademark infringement, do not hesitate to contact BéndiksenLaw for assistance.