The cancellation of an Andorran trademark due to the existence of a prior right

The cancellation of an Andorran trademark due to the existence of a prior right

Pursuant to a decision handed down on 28 July 2021, the Andorran Court (« Batllia ») cancelled the Andorran trademark Fidelity Investments due to the existence of a prior trademark FIDELTY INVESTMENTS, which constitutes a prior right within the meaning of Andorran trademark law.

The facts are clearly explained in the decision: the company FIL LIMITED is the owner of numerous trademarks around the world on the sign FIDELITY INVESTMENTS and it notably filed the verbal trademark application FIDELITY INVESTMENTS with the Andorran trademark office on 14 July 1998 to designate various financial services in class 36 (of the Nice classification). Said Andorran trademark has been registered under No. 11089 and is in force.

The company LINCOLN CAPITAL, LTD filed the trademark application Fidelity Investments on 9 January 2020 to also designate financial services in class 36. This Andorran trademark has been registered under No. 40950.

It is in this context that FIL LIMITED launched a lawsuit at the Andorran Court in order to obtain the cancellation of the trademark Fidelity Investments owned by LINCOLN CAPITAL, LTD.

The defendant decided to not be represented during the proceedings and was declared in « procedural rebellion » by order of 18 March 2021.

On the merits of the case, the Judge stated the legal provisions applicable when it comes to prior rights as set-out by article 3 of Andorran trademark law:

« 1) Cannot be adopted as a trademark or an element of a trademark any sign that violates a prior right.

2) Is considered as constituting a prior right:

a) an identical or similar trademark registered for goods and/or services that are identical or similar if the registration date of said trademark (…) is prior;

(…) »

The decision, firstly, states that both signs in presence are identical, « which only diverge by the used typography, the first mark is in capital letters whereas the second mark is in minuscule, but both marks refer to the same terms ».

Secondly, the comparison of the goods and services designated by the trademarks in conflict reveals that a vast majority of the designated services are identical and that other services are similar, « generating an obvious risk of confusion in the mind of the public ».

The Judge rightly concludes that the posterior trademark violates the Plaintiff’s rights held on its prior trademark FIDELITY INVESTMENTS No. 11089, thus declaring « the nullity of trademark No. 40950 of LINCOLN CAPITAL LTD, in application of article 26.2 of Andorran trademark law ».

The commented decision correctly applies the rules that govern this subject-matter and orders the recordal of the decision at the Andorran trademark Registry, forbids the defendant to use the sign FIDELITY INVESTMENT to designate financial products within the territory of the Principality of Andorra, and sentences the defendant to pay the legal costs.

In the absence of an appeal, this decision has become final.

There are two practical aspects that can be put forth regarding this decision:

  • The swiftness of the procedure leading to a Court decision of first instance
  • The importance of filing an Andorran trademark in order to cover the Andorran territory, which in particular, provides a legal basis for the right holder to cancel posterior “pirate” trademarks

Jonathan Hinkson

IP Department

Augé Legal & Fiscal

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