SHOULDICE: Chile modifies trade mark opposition practice

With regard to oppositions and cancellation actions based on famous or notorious trade marks, oppositions against applications that contravened good business ethics, or oppositions against trade marks that were likely to mislead consumers as to the source of products, the former practice of the Chilean Institute of Industrial Property was to request that such actions be supported by either a trade mark registration or, at least, a trade mark application filed in Chile or abroad. In two decisions of 27 June, this doctrine was modified in respect of applications that were misleading or unfair, but was affirmed with regard to famous or notorious trade marks.

The two decisions of 27 June involved applications by one Urquhart to register as trade marks in Chile the words SHOULDICE and CLINICA SHOULDICE for a medical clinic specialising in the treatment of hernias. The applications were opposed by Shouldice Hospital, of Ontario, Canada, which argued that its trade mark was famous abroad, that registration of the mark in the name of a third party would mislead consumers and that registration of the mark would contravene business ethics. The hospital also cited Articles 6bis (misappropriation of a well-known mark) and 10bis (unfair competition) of the Paris Convention in support of its opposition. By way of evidence the hospital submitted documents demonstrating that Urquhart was a former director of the hospital, as well as press cuttings, copies of patient records and its own company reports -- but no domestic or foreign trade mark registrations or applications.

The opposition based on Article 6bis of the Paris Convention failed, since the Institute of Industrial Property still required that a trade mark on which an opposition is based be registered, whether in Chile or abroad. The opposition based on Article 10bis and on the provisions of local Chilean law was however upheld.

Source: "Institute of Industrial Property upholds oppositions based on unregistered mark" by Sergio Amenábar (Estudio Villaseca, Santiago, Chile) World Trademark Review, 3 August 2012