Communauté Andine

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 382-IP-2021

Date of judgment: Issued on November 18, 2024; published on November 27, 2024 (Official Gazette of the Cartagena Agreement N° 5585)

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; Utility Models

Plaintiff: Moduldecks S.A.S. (Moduldecks)

Defendants: Into IT BTL S.A.S. (Into IT) and T-Trix Solutions Colombia S.A.S. (T-Trix)

Keywords: Industrial design, Utility model

Basic facts: In February 2016, Moduldecks applied to the Superintendency of Industry and Commerce (SIC), Colombia's patent and trademark office, for a utility model patent for the product called «Covering for grass and similar surfaces consisting of interconnected slabs and the slab used to form said cover.»[1] The SIC granted the patent in September 2017.

In November 2016, Into IT applied to the SIC to register the industrial design called «Floor Tablet»[2]. The SIC granted the registration in July 2018.

In July 2020, Moduldecks sued Into IT and T-Trix for selling products similar to its utility model patent. The defendant companies responded to the lawsuit, stating that their products did not infringe the patent because they were protected by an industrial design registration.

In December 2021, 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 a utility model and an industrial design, both registered.

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

1.         Functionality (and novelty) is relevant in the utility model (the granted claims). Aesthetics (and novelty) are relevant in industrial design.

2.         Preliminary Interpretation 476-IP-2019 established interpretative legal criteria related to the conflict between two types of industrial property rights: the three-dimensional trademark and the industrial design. The provisions of this ruling apply, mutatis mutandi, to the conflict between a utility model and an industrial design, both registered.

3.         In the event of a conflict between two registered industrial property rights, the oldest right shall prevail (prior in tempore, prior iure). This is without prejudice to the grounds for nullity—which are processed through the corresponding procedure—that could invalidate the granted registration.

4.         Whoever markets products on the basis of a granted industrial property registration (which may be a three-dimensional trademark, a utility model patent, or an industrial design) does not commit an infringement. Any conflict arising between a registered utility model and an industrial design (or even a three-dimensional trademark) must be resolved in accordance with the provisions of the preceding paragraph.

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