Legal ground for preventing the registration of a trademark due to copyright infringement

Abstract

Through an analysis-synthesis methodology, this work will try to answer the following question: What is the appropriate scope of the norm that prevents the registration of a trademark for copyright infringement? To do so, we will begin with the background of Article 136 in Andean Decision 486 of 2000. Subsequently, we will delve into relevant aspects of the use of artistic works as distinctive signs —for example, whether typographic fonts are framed in this type of works— and how letters, words and the way they are grouped relate to copyright. Afterwards, we will descend to the study of sounds that are used as trademarks, how they are linked to related rights, and how this point of contact usually goes unnoticed. We will also address the need to see beyond fiction and ideas when we talk about the protection of characters, moving quite far from the traditional position on the protection of titles of works and how this issue has been understood with respect to the norm that prevents the registration of a trademark for copyright infringement. We will discuss whose consent should be requested, its content, and how to apply the presumption of authorship and ownership in these cases. Finally, some clarifications on the registration of trademarks using works in the public domain and regarding the independence of actions for copyright infringement and the nullity of trademark registration will be provided.