Andean Community

This is an informal case summary prepared for the purposes of facilitating exchange during the 2025 WIPO IP Judges Forum.

Session 1: Industrial Designs

Court of Justice of the Andean Community [2021]: Preliminary Ruling 476-IP-2019

Date of judgment: Issued on September 10, 2021; published on September 10, 2021 (Official Gazette of the Cartagena Agreement N° 4336)

Issuing authority: Court of Justice of the Andean Community

Level of the issuing authority: Final Instance

Type of procedure: Judicial (Administrative)

Subject matter: Industrial Designs; Trademarks

Plaintiff: Crocs Inc. (Crocs)

Defendant: Evacol S.A.S. (Evacol)

Keywords: Industrial design, Three-dimensional trademark

Basic facts: In 2010, Crocs began selling clog-type rubber shoes in Colombia, which featured the word “Crocs” and the figure of a crocodile on the surface of the shoes.[1]

In 2012, Evacol began manufacturing and selling clog-type rubber shoes in Colombia, which featured the word “Evacol” and the figure of a toucan on the surface of the shoes.[2]

In 2012, Evacol obtained from the Superintendency of Industry and Commerce (SIC), which is the Colombian patent and trademark office, the registration of an industrial design in the form of a clog-type rubber shoe.[3]

In 2016, Crocs obtained from the SIC the registration of a three-dimensional trademark in the shape of a rubber clog-type shoe.[4]

Between 2016 and 2017, Crocs filed an industrial property infringement action against Evacol, alleging that the company’s products were confusingly similar to its three-dimensional trademark.

In 2019, a Colombian court requested that the Andean Court interpret provisions of Decision 486 – Common Regime on Industrial Property, which is the Andean industrial property law applicable in Bolivia, Colombia, Ecuador, and Peru.

Held: In fulfilling its function of ensuring the uniform and consistent application of Andean law, the Andean Tribunal established interpretative legal criteria that allow national judges to resolve a conflict between an industrial design and a three-dimensional trademark.

Relevant holdings in relation to industrial designs: The Andean Court has developed the following legal criteria to resolve a conflict between an industrial design and a three-dimensional trademark:

1.         In principle, a three-dimensional creation can enjoy dual protection: as an industrial design and as a three-dimensional trademark. What is important for it to be an industrial design is that the aesthetic aspect of the expression is novel (original), while what is essential for it to be a three-dimensional trademark is its distinctive capacity in the market.

2.         A person may be the owner of a three-dimensional creation that enjoys both rights: industrial design and three-dimensional trademark.

3.         In theory, and regardless of the diligence or lack of diligence of the patent and trademark office, it is possible for one person to be the owner of an industrial design and another to be the owner of a three-dimensional trademark, and for both industrial property rights to be identical or similar.

4.         If the industrial design was registered first and products under that design have been selling in the market, it would be unusual for a three-dimensional trademark identical or similar to the aforementioned design to be registered later, since the aforementioned products would negate the distinctiveness of the trademark. Indeed, if the three-dimensional creation is already used by one or more competitors, it is likely a usual or common form in the market.

5.         If the three-dimensional trademark was registered first, it would be strange if an industrial design identical or similar to the trademark were subsequently registered, since the existence of this trademark and the products distinguished by it would make the novelty requirement, required for the industrial design, impossible.

6.         If the industrial design of one person coexists in the market with the three-dimensional trademark of another, which are identical or similar, consumers could incur a risk of confusion regarding the business origin of the products related to said industrial property rights.

The risk of confusion between both industrial property rights could arise, for example, if the consumer, upon purchasing a product protected by the industrial design owned by company “A”, believes that this product has been manufactured by the company that sells similar products, but which are protected by a three-dimensional trademark registered in favor of company “B”. That is, the consumer’s choice in the market could be affected due to confusion regarding the business origin of a particular product.

7.         In the event of a conflict between an industrial design and a three-dimensional trademark, in the sense that consumers could be led to a risk of confusion regarding the business origin of the products sold on the market and which are protected by both industrial property rights, but held by different owners, the oldest registration must be privileged, in application of the principle “first in time, first in right” (prior in tempore, potior in iure).

Additional criteria:

On the existence of infringement of a three-dimensional trademark in a scenario in which the products subject to the alleged infringement have been marketed for years prior to the granting of the trademark registration

1.         Unlike word and figurative trademarks, some non-traditional trademarks, such as color and three-dimensional trademarks, have a greater potential to empower their holders to restrict competition. Hence, there is a need for industrial property offices to be very careful and rigorous when granting registration to these types of trademarks. If, for example, an authority, due to a lack of due diligence, were to grant registration as a three-dimensional trademark to the way a product is marketed by different holders—that is, a generic or common form—this circumstance would prevent those holders from using the form they were already using in the market. This would clearly impair competition and, in turn, harm consumers.

Let’s assume, hypothetically, that a three-dimensional trademark is mistakenly granted for the shape of a beer bottle, which is similar to the one used by most competing beer manufacturers. Without prejudice to questioning the possible lack of distinctiveness of the aforementioned three-dimensional trademark—grounds for arguing the absolute nullity of the trademark registration—the fact is that the granted registration can be used by its owner to initiate industrial property rights infringement actions against its competitors, which would demonstrate that an improperly granted registration has the potential to seriously harm competition in the market.

2.         In a scenario where the action for infringement of a three-dimensional trademark is directed against persons who have been selling identical or similar products to the aforementioned trademark for years, the competent authority must verify whether or not there has been peaceful coexistence between the signs (and products) in conflict, which, based on a retrospective analysis (looking at the past), generates the conviction that the consuming public did not and will not incur a risk of confusion. Coexistence must be complemented by other elements that generate complete conviction about the absence of a risk of confusion or association on the part of the consuming public. These other elements may be the word or graphic signs that accompany the products in dispute.

3.         The aforementioned retrospective analysis could demonstrate that the product protected by the three-dimensional trademark and the products subject to infringement have coexisted peacefully in the market for years prior to the granting of the trademark registration, without generating a risk of confusion or association in consumers, thanks to additional distinctive elements, such as the denominative and graphic elements that distinguish the products subject to dispute. The absence of a risk of confusion or association rules out the existence of trademark infringement.

Conclusion of the case in the national jurisdiction:

In 2024, the Colombian Judiciary rejected Crocs’ infringement claim, basing its decision on the fact that, with respect to the aforementioned rubber clog-type shoes, the distinctive signs of Crocs and Evacol have coexisted peacefully for years without generating a risk of confusion among consumers. The products are distinguished by the brand names (Crocs and Evacol) and the figures (a crocodile on Crocs products, and a toucan on Evacol products) appearing on the surface of the shoes; that is, by additional distinctive elements.

Relevant legislation: Decision No. 486 Establishing the Common Industrial Property Regime (this Andean law is applicable in Bolivia, Colombia, Ecuador and Peru)