In confrontation with the Distinctive signs.
By: Alessio Rosso Q., BAQSN Abogados
There is a latent problem in commercial activity in Bolivia since, due to the lack of coordination between the Commercial (SEPREC) and Industrial Property (SENAPI) registries, on many occasions conflicts arise between merchants due to the coincidence of the denominations used for the name of the commercial company or sole proprietorship and the trademarks or trade names previously registered.
Doctrinally, there is total clarity about the scope of each of these legal figures, the controversy is generated by a misunderstanding of the scope of the name or company name that appears in the Commercial Registry, which does not grant the right to use it as a distinctive sign, because it is regulated by other laws and is the competence of a public entity other than SEPREC that is the one who authorizes the name or corporate name.
Many merchants consider that by having a name registered in the Registry of Commerce granted by SEPREC, they automatically have the right to use this name as if it were a distinctive sign, an aspect that does not correspond to reality.
There are many cases that have arisen in which the owners of trademarks or trade names have initiated legal actions against commercial companies that have in their corporate name a name similar or equal to a previously registered trademark or trade name and have used it in the market to identify their establishment or even, the sale of products or provision of services.
The affected owners have the right to exclusive use in the market of the distinctive sign that they have registered and have active legitimacy to initiate actions against those persons who violate this right and/or carry out activities that may be considered unfair competition.
We consider that this problem is not minor or exceptional, but a reality, with many ongoing conflicts, which wear down merchants, represent expenses for administrative and judicial processes, as well as lost investments in image, advertising, marketing that affect peaceful coexistence in the market if they are not addressed in a timely manner.
The question here is: Can these problems be avoided? We are convinced that it is, and that the fastest and most economical solution is through a joint decision between SEPREC and SENAPI to coordinate their activities and share relevant information on the existing registrations in both entities in order not to authorize the use of names of sole proprietorships or commercial companies, as well as trademarks or trade names that may lead to confusion with the previous registrations existing in both entities.
The recommendation is based on both entities requiring as a requirement for the registration of a commercial company or a sole proprietorship, as well as the registration of a trademark or trade name, the presentation of a background report of previous registrations, both from the SEPREC database, as well as taking into consideration the SENAPI database. in order to be certain that the rights of third parties will not be affected and there will be no controversies in the near future.
Previously published in The Legal Industry Reviews, Bolivia Edition, December 2024
