The Washington Convention to the rescue of non-registered trademarks

September 2020

With the increase in digital sales, many customers are starting to sell in remote countries where they had not been able to sell yet. And those sales come before they decide whether to register their brand in those countries or not. Some third parties, aware of this circumstance, take advantage of it to register the trademark in their favor.

Latin American countries follow the principle of priority registration. That is, the one who first registers has the right to the trademark. However, there are some exceptions. In this note we briefly refer to one: The Washington Convention.

The Washington Convention allows opposing a trademark, even without prior registration in the country in question and despite not having a prior notorious trademark, provided that the following circumstances are met:

1. The party that opposes the trademark must be a beneficiary of the Convention. They are nationals of a Contracting State or foreigners who have a manufacturing or commercial establishment in any of the Contracting States.

2. The trademark must have been registered in a Contracting State prior to the application for the trademark against which the opposition is filed.

3. The previous mark must have been used and continue to be used for products or merchandise of the same class.

4. The applicant for the trademark against which the opposition is filed had to be aware of the existence and use of the trademark on which the opposition is based.

5. Lastly, the opposing trademarks must be substantially the same or be capable of causing confusion in the consuming public regarding the products to which they are applied.

It is not easy to show that these requirements are met but they are a last resource to which many companies have applied to when the Convention is applicable. Without going any further, last year ADIDAS raised it before the Peruvian INCECOPI. They were able to succeed in an opposition against the QUESTRA trademark application based on its US trademark QUESTAR, despite not have it registered in Peru and not being a well-known trademark (or, at least, that did not have to be proven in that proceeding).

The Washington Convention was signed by many countries but it was only ratified in Chile – with reservations -, Colombia, Cuba, Guatemala, Haiti, Honduras, Nicaragua, Panama, Paraguay, Peru, and the United States. Today, Peru and Colombia are the ones that apply it relatively frequently. Therefore, our recommendation is clear: Whenever you can, anticipate and register your brand as soon as possible, wherever you plan to sell.