Wednesday, March 30 2022   \  Published by OMC Abogados & Consultores.

Use of trademark without rights owner's knowledge

The registration of a trademark confers to the owner the right of exclusive use of the mark and empowers it to prohibit third parties from using the mark without its consent or authorisation. The unauthorised use of a mark constitutes a violation of IP regulations, and the affected party may take measures against the infringer. It can initiate an action for infringement of IP rights under article 99 et seq of Legislative Decree 1075 and articles 238 to 244 of Decision 486 of the Commission of the Andean Community (Decision 486).


Article 238 of Decision 486 states that:

the owner of rights protected under this Decision may bring an action before the competent national authority against any person who infringes his rights. He may also proceed against any person who engages in acts that indicate the imminence of an infringement.

Likewise, article 155(d) of this regulation states the following:

Registration of a mark shall confer on its owner the right to proceed against any third party who, without his consent, performs any of the following acts:

. . . .

d) using, in business dealings, a sign identical or similar to the mark in relation to any goods or services where such use could cause confusion or a risk of association with the owner of the registration. Where an identical sign is used for identical goods or services, it shall be presumed that there is a risk of confusion.

The complainant of a trademark infringement can request the authority to order measures such as cessation of the acts of infringement, compensation for damages, withdrawal from the market of the products resulting from the infringement, or prohibition of the import or export of those products, among other measures indicated in article 241 of Decision 486. In addition, the complainant may ask the authority to order immediate precautionary measures as set out in article 246.

Among the penalties that can be imposed by the authority for cases of trademark infringement, there is a reprimand and a fine. The fines imposed for violations are up to 150 tax units, and in cases where the real illicit profit obtained from the infringing activity is greater than 75 tax units, the fine may be 20% of the sales or gross income received from the infringing activity, as set out in article 120 of Legislative Decree 1075. In addition, it must be taken into account that reoffending in these acts is considered an aggravating circumstance. Read more


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