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 [2024]: Preliminary Ruling 130-IP-2021
Date of judgment: Issued on August 27, 2024; published on September 2, 2024 (Official Gazette of the Cartagena Agreement N° 5539)
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
Plaintiff: Industria Boliviana de Envases INBOPACK S.R.L. (Inbopack)
Defendants: Servicio Nacional de Propiedad Intelectual de Bolivia (Senapi) [National Intellectual Property Service of Bolivia]
Keywords: Industrial design, Utility model, Three-dimensional trademark
Basic facts: The domestic proceeding involved, among other matters, whether the industrial property authority can ex officio reject an application for registration of an industrial design.
In May 2021, a Bolivian 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 guide national judges in the ex officio rejection of an application for registration of an industrial design.
Relevant holdings in relation to industrial designs: The Andean Court has developed the following legal criteria on the ex officio rejection of an application for registration of an industrial design:
1. Pursuant to the provisions of the second and third paragraphs of Article 124 of Decision 486, if there is no opposition, the competent national office may ex officio reject the application for registration of an industrial design if it finds that it manifestly lacks novelty.
2. If the registrar finds that the industrial design subject of the application is identical or very similar to designs (drawings or models) already on the market and that are easily recognizable, such as, for example, the shape or aesthetics of certain products or their packaging, well-known clothing or dresses, among others, it will ex officio reject the application.
3. Such a refusal is also admissible if the registrar finds that the industrial design subject of the application is identical or very similar to previously registered industrial designs or trademarks (figurative or three-dimensional).
4. Ex officio refusal is a power of the competent national office, not an obligation.
Relevant legislation: Decision No. 486 Establishing the Common Industrial Property Regime (this Andean law is applicable in Bolivia, Colombia, Ecuador and Peru)