In its decision in Benneton v. Kadoch issued in February, 1995, the Andean Tribunal of Justice held that a mark may not be registered in Colombia if it is confusingly similar to another mark which is notorious either in Colombia or in another country, regardless of the class of goods or services involved, provided that the notorious mark is registered somewhere in the world.

An application by an individual for the trademark BENETTON in respect of clothing was opposed by the Italian owners of the BENETTON mark on the ground that they had used and registered the BENETTON mark extensively in other countries of the world. The opposition did not succeed initially, although this decision was overturned on appeal. The appeal decision was further appealed and the issue was referred to the Tribunal for a determination on the application of the relevant Andean Pact Decisions.

The BENETTON application was filed and opposed while Andean Pact Decision 85 was in force. However, in addition to applying Decision 85, the Tribunal also applied the relevant provisions of the Decision which replaced Decision 85, namely, Andean Pact Decision 313 (reported in our Information Letter N.S. 179), and further referred to the relevant provisions of subsequent Decision 344 (reported in our Information Letters N.S. 181 and 182), since the Tribunal regarded the governing law as the law in force at the time the decision on the opposition was made, in this case Decision 313.

The Tribunal held that under the relevant provisions of Decision 313 (now Decision 344), a mark which is well-known, if only abroad, and registered abroad should not be registered by another party in Colombia and a conflicting application may be opposed on such grounds. Therefore, the Tribunal directed the Colombian Council of State to adopt this decision and uphold the opposition against the BENETTON application, which the Council of State subsequently ordered.

The Tribunal's decision is far-reaching, and arguably exceeds the actual rights granted to well-known marks under the provisions of Decisions 313 or 344. However, the decision is a welcome ruling for owners of well-known marks whose marks are applied for in Colombia by unauthorized parties. Although the Tribunal's decision has binding effect only in connection with this specific case, the case should be considered to be persuasive in the application of Decisions 313 and 344 to other similar situations, not only in Colombia, but also in the other Andean Pact countries, namely, Bolivia, Ecuador, Peru and Venezuela.