Trademark Laws are based on various guiding principles. One of them, is the principle of specialty. This principle limits the right of the owner of a mark to prevent third parties from using or registering the same mark or one that is substantially similar, for those goods and services for which the trademark is protected or for those goods and services that hold competitive connection to these. 

The principle of specialty enables identical marks to peacefully coexist in the registry and the marketplace, when the goods and services covered are different. It is based on consumers being able to identify that the confronted goods and services have different commercial origins, or that their commercial origins have no economic or legal relation. This is the case of the cliché example used for trademarks CORONA. Under normal circumstances, consumers can identify that the owners of the beer brand have nothing to do with those of the tableware trademark. 

There are some exceptions to this principle. Notorious or well-known marks are also protected from the risks of dilution and parasitic use. Thus, even when there is no risk of confusion and association, owners of famous marks can prevent third parties from using or registering the same mark or one that is substantially similar. 

However, when neither of the marks is notorious, to establish if these are confusingly similar, trademark authorities look at the similarities between the confronted marks and those between the goods or services covered by each. Traditionally, the Andean Court and other national trademark authorities, establish if goods and services are similar by looking at the consumer target, the use of similar trade and advertising channels, gender-species, or part/accessory relationships, technology used, etc. Until recently, these criteria were used indistinctively and without prevalence with most of them being given the same degree of importance.

By means of Judicial Interpretation Process 100-IP-2018 the Andean Court differentiated (i) those criteria that are substantial for determining competitive connection between goods and services from (ii) those that are insufficient by their own to establish this. To be deemed competitively related, goods and services must be either complementary, interchangeable or there should be enough motives for the consumer to reasonably believe that these are made or offered by the same enterprise.

Process 100-IP-2018 also defined what is meant by each of these three criteria. Interchangeability means that the goods and services are substitutes of each other as they have the same characteristics and purpose or satisfy the same needs. Consumers can freely choose between them. Complementarity refers to the need to consume or use a product or service as a result of the acquisition or consumption of another. The use of one causes the need to use the other. Reasonability, explicitly, the existence of enough motives to believe that goods and services are made or offered by the same enterprise, refers to the reality of the marketplace. Namely, whether it is common or frequent for the same enterprise to offer the same goods and services subject of comparison in the marketplace. 

The hierarchization of criteria to establish competitive connection helps update decisions of our Trademark Office. It invites examiners and users of the Industrial Property system to think based on the reality of the marketplace instead of analyzing these matters in abstract and without practical applications. For example, today many goods and services use similar technologies to reach consumers – applications and software – yet most of them do not actually compete in the marketplace.