New Registers can Oppose Marks Previously Filled for Registration

Monsieur Periné, a Colombian musical group, achieved recognition of its name as a well-known trademark. This declaratory was made by the Superintendence of Industry and Commerce (SIC) within the opposition process issued by this musical group against the register of the mixed mark ‘Monsieur Perruné’ filed for registration in class 41 by Emepe S.A.S., a company offering live music performances and services. One of the arguments used by the company in its defence was that its application for registration of the trademark was issued before (14 October 2016) to that one made by Monsieur Periné (11 November 2016). Under Article 136 of the Decision 486 of the Andean Community of Nations (CAN) the signs that would unduly harm a third-party rightcannot be registered as marks, especially when ‘they are identical or similar to a mark previouslyfiled for registration or registered by a third party in respect of the same goods or services, or for goods or services regarding which the use of the mark could cause a risk of confusion or association.’ (Emphasis added)

  

However, more than an argument against the opposition issued by Monsieur Periné, this just goes to show that the musical group is acting in line with the Colombian trademark law. The opposition is a legal proceeding that anyone with a legitimate interest can initiate to try to prevent the registration of a mark. On the matter, Article 147 of the Decision 486 of the CAN establishes that ‘the opponent shall prove his genuine interest in the market of the member country in which the opposition is filed, which they must do by applying for registration at the time of filing the opposition.’ From these two Articles, it has been interpreted that an opposition can be suited either when there is a mark previously filled for registration or already registered, or when no registration exists. Unless the opposition is presented based on the prior existence of a register, the opposition must be issued together with an application for the registration of the mark that allegedly could be violated with the concession of the opposed mark.

Evidently, Monsieur Periné is a successful musical group otherwise its name would not have been recognised as a well-known mark. By contrast, Emepe S.A.S. was a little know company, which apparently was trying to take unfair advantage of the prestige of Monsieur Periné. This, because of the obvious similarities between the signs ‘Monsieur Periné’ and ‘Monsieur Perruné.’

The case in which a registered mark is declared well-known within an opposition process was analysed in a previous post. (See post here)

Finally, a document of opposition does not require a petition for the recognition of a well-known mark, but, if included, the decision must not necessarily be favourable. For example, the register of the sign ‘Forever Sexy’ filled in class 25 by Victoria’s Secret was recently denied. The decision was made based on the prior registration of the mark ‘Forever’ in classes 9, 14, 18, 24, 25, and 35, a property of Forever 21 Inc. ‘Forever’ was not recognised as a well-known mark at the end of this process. Nonetheless, due to their similarity, the mark ‘Forever Sexy’ was not able to be registered.

    

Post written by Florelia Vallejo Trujillo

Assistant Professor, Universidad del Tolima, Colombia

PhD Candidate University of Nottingham, UK