This is an informal case summary prepared for the purposes of facilitating exchange during the 2026 WIPO IP Judges Forum.
Session 6: Comparative, Referential and Expressive Use of Trademarks
Court of Justice of the Andean Community [2023]: Preliminary Ruling 75-IP-2021
Date of judgment: August 29, 2023
Issuing authority: Court of Justice of the Andean Community
Level of the issuing authority: Final Instance
Type of procedure: Judicial (Administrative)
Subject matter: Copyright and Related Rights (Neighboring Rights); Trademarks
Plaintiff/ Appellant: Converse, Inc.
Defendant/ Respondent: Nestlé de Colombia S.A.
Keywords: Trademarks; Use without authorization; Exclusive rights; Exceptions and limitations; Exhaustion; Product giveaways; Raffle prizes
Basic facts: Converse Inc. sued Nestlé de Colombia S.A. for offering as a raffle prize (conducted as part of its business activities) a product (footwear) with the trademark and advertising strategy owned by Converse Inc.—which the plaintiff asserts are protected by industrial property rights and copyright, respectively—by copying, plagiarizing and using them without the authorization of the holder.
Nestlé de Colombia S.A. alleged that the plaintiff's trademark was not infringed, since the uses made were in accordance with the regulatory exceptions for trademark use without the owners’ authorization or consent, established in Article 157 of Andean Decision 486. Regarding the advertising campaign, such strategy is not considered copyright protected, hence, no infringement occurred.
The Superior Tribunal of Bogota, the court authority in Colombia in which the case was litigated, requested the Court of Justice of the Andean Community to interpret Article 157 of Decision 486.
Held: According to the Court of Justice of the Andean Community, in its interpretation of Article 157 of Decision 486, the concept of exhaustion of rights implies that the owner of a trademark cannot prosecute anyone who uses the trademark (and the product) once it leaves his sphere of influence. When the product is acquired by a third party, the latter is entitled to use it—including the trademark—or resell it, if it is the original product without any type of modification or alteration.
Additionally, the gifting (or raffling) of a product in advertising campaigns falls under the exceptions to the requirement for trademark owner authorization established in Andean legislation, as it constitutes: (i) a good-faith commercial activity; (ii) a use for information purposes; and (iii) it is not used as a trademark to identify or distinguish other type of products or services. According to the Andean Court, the benefits derived from using a third party’s product for a gift or raffle constitute a legitimate benefit for the party offering the item, without adversely affecting the owner of the trademark associated with the gifted or raffled product. On the contrary, such use could enhance the market positioning of the brand featured in the contest. The gifting (or raffling) of products (or services) by a third party outside the ordinary course of business—and the associated advertising campaign—is considered a limitation on the exclusive right to use a trademark, meaning that the trademark owner’s authorization is not required for such use.
Relevant holdings in relation to referential use and expressive use of trademarks: In its ruling of March 13, 2024, the Superior Tribunal of Bogotá, applying the interpretation established in case 75-IP-2021, determined that Nestlé de Colombia S.A. did not infringe any registered trademark of Converse, Inc, in its advertising or in connection with the prize draw; the use of a specific shoe model owned by the company in advertising is considered an exception to the requirement of obtaining the trademark holder’s authorization. It was demonstrated that the company acted in good faith and that the plaintiff was aware beforehand that the contest was to be launched—given prior negotiations—and the fact that the plaintiff did not participate does not imply that Nestlé de Colombia S.A. committed any infringement. The Tribunal also ruled that customizing an item (such as a shoe) is not a strategy exclusive to the plaintiff, therefore, the plaintiff cannot claim any damages arising from such a contest or promotion.
Relevant legislation: Decision No. 486: Common Regime on Industrial Property (CAN012).