Insurance companies from Colombia y Peru in intense litigation over trademark Positiva

By Francisco Espinosa Reboa, Francisco Espinosa Bellido

The Andean Community countries, Colombia, Peru, Ecuador and Bolivia, share a same Industrial Property legislation (Decision 486) and system, which grants a trademark owner from any of those countries the right to file an opposition against an identical or similar trademark application in any of the other countries. This is called an “Andean opposition”.

This policy created to promote integration and participation of local companies in all the Andean Community countries can sometimes create intense litigation over a trademark in a country where the oppose has no actual economic participation, as can witness the Colombian insurance company Positiva Compañía de Seguros, which after five years in the Colombian marketplace has been unable to register its trademark before the Superintendence of Industry and Commerce of Colombia, due to the “Andean opposition” filed by the Peruvian insurance company La Positiva Seguros y Reaseguros S.A., based on their registered trademark ‘La Positiva Seguros’ in class 36 in Peru.

The conflict started in October 2008 when Positiva Compañía de Seguros filed in their natal Colombia a trademark application for registering its name in international class 36, and received an “Andean opposition” from the Peruvian company, based on its Peruvian trademark registration. While at first the registration was granted, on appeal the delegate Superintendent for Industrial Property revoked the resolution and rejected the registration.

On April 2011 Positiva Compañía de Seguros filed a new application which also received an opposition from the Peruvian company. This new opposition added as arguments the application of the General Interamerican Convention of Trademark and Commercial Protection, also known as Washington Convention and its supposed well known status.
The applicant counter argument has centered in the use of its trade name in Colombia, which they allege is prior to the rights claimed by the opposer. They have also deposited their trade name on December 2008 and have been granted registration No. 19006, which is in force.

Being a requirement of the “Andean opposition” that the opposer files an application for its trademark in the country where it is filing the opposition, in order to demonstrate legitimate interest in such market, the Superintendence of Industry and Commerce of Colombia verified that the Peruvian Company has already filed an application in Colombia for trademark “La Positiva Seguros’ in classes 36 and 44, which were granted by Resolution 80144 from December 26, 2012.
Although litigation is still ongoing, it appears that the Peruvian company is poised to prevent the registration of the name “Positiva” in Colombia by its local company. A settlement may also be a possibility in the future.

According to Colombian experts, while the Peruvian company may eventually be able to file legal actions against the use of the name “Positiva” in Colombia by the Colombian company, it is unlikely that it may obtain any award of damages since there are no evidence that the consumers have been subject to actual confusion, given the fact that the Colombian consumers do not associate the name “Positiva” with the Peruvian company, which has no economic activity in such country.