The dispute over parallel imports of cigarettes bearing the trade mark BELMONT (Bigott v Philip Morris) has been developing over several years, under the industrial property laws of the Andean Community.

Bigott applied at the Colombian Trademark Office for the cancellation of the trade mark BELMONT on the grounds of non use.

That cancellation was refused by the Trademark Office, which considered that the lack of use of the mark had its origin in the prohibition of the import of foreign cigarettes into Colombia during part of the three-year period during which Philip Morris had to prove the use.

Bigott, being in disagreement with the resolution of the Trademark Office, requested its annulment at the Council of State on the grounds that it was contrary to the Andean Community Law.

The Andean Court of Justice rendered a pre-judicial interpretation of the Andean Community Law and concluded that for the use of a trade mark to be able to offset a cancellation action it is necessary that it be made by the owner of the mark or by its licensee or assignee. The Court sentenced that the owner of the mark should demonstrate its actual use in compliance with all the elements of form, intensity, temporality and application necessary to consider that use to be likely to thwart the success of the cancellation action.

The Court enriched the concept of use by stating that the use of the mark should be real and effective, and the intention to use the mark or its advertisement does not suffice. It is necessary that the mark be displayed externally and publicly so that the use is real and not simply formal or symbolic. The Court added that the use should be serious, in good faith, normal and unequivocal and previous to the filing of the cancellation action on the grounds of non use.

This interpretation is of mandatory application by the Council of State, which followed it in its sentence. The Council studied the principle of use of the mark, the causes justifying the non-use of marks as well as the quantity and amount of the BELMONT cigarettes imported to the free port of San Andrés y Providencia by Philip Morris, as well as its use in other countries of the Andean Community.

The Council of State found that the prohibition of importing cigarettes into Colombia had only been in effect for a part of the three-year period, beyond which Philip Morris should have used the mark. Furthermore, the Council determined by means of a sentence that the imports to the free port of San Andrés had been so small that they could not be considered to be real and effective use of the mark BELMONT.

Consequently, the Council of State sentenced that Philip Morris had not demonstrated the prohibition of the importation of cigarettes but only its restriction. It also decided that it had not proven the real and effective use of the trade mark and that therefore it cancelled the registration of the mark BELMONT owned by Philip Morris.

Additionally, in compliance with the law, it granted Bigott the prior right to register the trademark BELMONT in its favour within the three next months.

Therefore, Bigott will from now on be the owner in Colombia of the trade mark registration for the mark BELMONT for cigarettes in class 34.

The aforesaid sentence can be the object of an extraordinary appeal.

Germán Cavelier