The Superintendence of Industry and Commerce, in its Concept 17401465 of January 17, 2018, in accordance with Article 157 of Andean Decision 486, clarifies the requirements for the use of a third party's trademark logo not to imply infringement of trademark rights, even when the logo is used without the consent or even knowledge of the trademark owner.
According to the aforementioned concept, the use of third-party trademarks in advertising does not imply trademark infringement provided that such use complies with the elements set forth in Article 157 of Decision 486, namely: "that it be done in good faith, does not constitute use as a trademark, and such use is limited to identification or information purposes and is not capable of inducing the public into confusion regarding the origin of the products or services"[1]
From this, it follows that the legal indication of good faith refers to the loyalty that must be maintained with respect to the legitimate interests of the trademark owner and the general interest of consumers, as well as the proper functioning of the market. Secondly, the logo of a third-party trademark may be used provided that it does not constitute use as a trademark but rather is used in a referential manner. Likewise, by limiting the purposes of use to identification or information, it is established that the indication must have as its exclusive purpose the identification or information of some characteristic of the product or service to which it corresponds. Fourthly, with the aim of not inducing the public into confusion regarding the origin of the products or services, it is sought that in the implementation of the respective logo or trademark there be no risk of confusion or association on the part of consumers.
It is necessary to clarify that the elements stipulated in Article 157 of Decision 486 must be concurrent, that is, if any of the aforementioned conditions are not met, the use of the logo of a trademark would be abusive and harmful to the interests of its owner, thus having legal repercussions.
The trademark owner, upon registration, acquires a series of rights, including the right to exclusive use, limitation on modification by third parties, prohibition of third parties' use of identical signs, among others. Likewise, the law has provided scenarios in which the trademark owner's rights are limited, thus leading to various ways in which the implementation of third-party logos in advertising would not imply trademark infringement. One is the aforementioned, and another is the trademark license, through which the owner of a registered trademark may grant a license to one or more third parties for its use.
[1] Referentially, see Andean Community Decision 486, p. 39.
These types of limitations on the rights of a trademark owner are made with the aim of preventing excesses in their exercise. That said, this does not imply that third parties may use a trademark indiscriminately and with the purpose of illegitimately appropriating it, but rather, on the contrary, what is intended is to permit and regulate the implementation of a trademark logo for purely illustrative or informative purposes, provided that the rights of the owner, third parties interested in the same, or society in general are not affected.
In conclusion, it can be determined that although the owner or holder of a trademark has certain rights of a moral and personal nature, these can be limited to a certain extent so that they are used for purely advertising or illustrative purposes, provided that this does not imply detriment or harm to the public, leading to confusion regarding the origin of products or services, or is done in bad faith.