Monday, 27 October 2014

Colombia: a toy decision

Back in October 2013 the Colombian company ‘Two of You’ applied for the registration of the mark ‘Toy Two of You’ in class 3 of the Nice Classification (i.e. nail varnish/polish, nail art stickers, perfumes,among others). Once the application was published and no opposition was filled, the Superintendence (SIC) started to examine the registrability of the sign.

At such stage, SIC encountered the registered mark ‘Toy Story’ in class 3 by Disney Enterprise. Due to this finding, the office believed that the signs were similar and thus, would cause confusion among the public. Therefore, the application was rejected on relative grounds of refusal Art 136 Andean Community (CAN) Decision 486.

Two of you appealed to the decision arguing that the marks were not similar since they were orthographic differentiated, especially visually. While they shared the word 'Toy' there were other element that differentiated them. The appealed succeed and the mark ‘Toy Two of you’ have been successfully registered (Dossier No 13246132).

The newspaper La Republica published the point of view of IP lawyer Guillermo Navarro, who said that the first instance decision "was an exaggerated interpretation, and out of context”. And thus agreeing with the appeal outcome. Moreover, he asserts that the signs contained enough differences and that this was showed by Disney not filing opposition. Another IP lawyer opinion was also published, that of Miss Julia Carmen Monroy, at Wolf & Mendez who also agreed with the appeal conclusion. She said that "Toy Story is a well-positioned brand in the market, and … consumers do very well differentiate the two products.”

Thursday, 23 October 2014

INAPI de Chile inicia sus operaciones como ISA/IPEA del PCT

Hace dos años tuvo lugar la designación del INAPI de Chile como ISA/IPEA en el marco del Patent Cooperation Treaty (PCT).

El 22 de octubre mediante un acto público con presencia de autoridades políticas se dio inicio oficial a las operaciones como Administración Encargada de Búsqueda y Examen Preliminar Internacional (ISA /IPEA), en el marco del  PCT, pasando a ser una de las 19 oficinas de PI que asiste a los solicitantes en busca de protección internacional por patente y a las Oficinas en las decisiones sobre el otorgamiento de patentes. Chile se convierte en el segundo país de la región, junto con la Oficina de Brasil, con capacidad para de desarrollar informes internacionales de patentabilidad.

Según destacó el Director Nacional de la institución Maximiliano Santa Cruz “nos hemos preparado durante dos años para asumir este rol, capacitando a nuestros examinadores, adquiriendo bases de datos de información tecnológica y mejorando nuestros sistemas de control de calidad. Estoy seguro que estaremos a la altura de la responsabilidad que nos entregó la comunidad internacional”.

Para más información sobre el rol que tendrá INAPI como ISA/IPEA haga click en

Fuente: Constanza Zülch Barrios (Encargada de Comunicaciones INAPI)

Tuesday, 21 October 2014

Starbucks: no 'shared planet' in Colombia

On July this year the American well-known coffee brand Starbucks launched its first store in Colombia. But, before launching its store it applied for the registration of some of its trade marks at the Colombian Superintendency of Industry and Commerce (SIC). While the nominative and graphic marks for Starbucks did not encounter any issue, the same cannot be said for its nominative mark ‘Shared Planet’ applied to be registered in classes 30, 36 and 41 respectively.

Despite the fact that there was not opposition for the mark to be registered SIC proceeded to examine the sign in accordance with Art 150 Decision 486 of the Andean Community (i.e. “At the expiration of the period stipulated in article 148, or if no objections have been filed, the competent national office shall proceed to conduct the examination of registrability.”). By doing so, SIC found that the mark was similar to a previous registered one i.e. ‘Sharé’ (Dossier No 03 085665) registered back in September 2003 to Mr Martinez in class 30 Nice Classification (coffee, tea, vinegar, condiment sauces, etc) and therefore, rejected the said application for just that class. SIC granted to Starbucks the nominative mark ‘Shared Planet’ in classes 36 and 41 after the company appealed to the decision.

In the opinion of Ms Calderon, a lawyer from Prietocarrizosa, "this is a very complex case as there are reasons to believe that the signs have substantial differences that would not allow a consumer to get confused between them, but on the other side it is clear that the main elements of both signs are quite similar, hence, understand the position of the SIC to deny registration ".

It is noticeable from the dossier that the expiration date is/was 30 April 2014 and thus, up to today there has not been renewal of the said mark. However, SIC grants a grace period of 6 months and thus, Mr Martinez do have until 30 October to renew its mark – otherwise, after this day, it would be free to grab.

The newspaper 'La Republica' publishes the view of Mr, Jesus Mendez, an IP lawyer from the firm Wolf & Méndez. He appears to disagree with the ‘grace period’ stating that "In strict legal sense, the mark has expired and in this case [SIC] is extending the period of protection.”

Nevertheless one might remember that according to Art 153 Decision 486 of the Andean Community, the owner of a registered trade mark or any party with a legitimate right “shall be given a grace period of six months following the date of expiration of the registration in which to apply for renewal.” Moreover, the “registered trade mark shall retain its full validity over that period.” That said, and using the same statement as Mr Mendez, ‘in strict legal sense’ Mr Martinez still have a legal base for its mark to be protected and for SIC rejecting the said application from Starbucks.

Monday, 20 October 2014

Brazil: Progress and looking ahead -- facilitating online services

The Brazilian Instituto Nacional da Propiedade Industrial (INPI) is now facilitating access to online search system of trade marks, patents, industrial designs, and computer programs. It all started last Tuesday, October 14.

There is a direct link and thus access to the database without going through login/password page. However, if you would like to have access to a wider content and thus, production of documents, you should register. This latter appears to be a straightforward and easy process i.e. just filing out certain details – as far as I am aware nothing to do with ‘payment/fee’ details as the Venezuelan IP office requires (see previous post here).

Registration, while not crucial, comes divided into three sectors: 1.- Client (natural or legal person domiciled in the country); 2.- Lawyer or Attorney without special qualification (representing a client in the requested services); and 3.- Industrial Property Agent.

This new addition complements previous online services such as: ‘e-marcas, electronic view of petitions, and ‘push’.

Colombia trade mark registration keeps getting speedier

At the end of September Natalia Franco Onofre posted the good news on IP Tango that trade mark registration in Colombia was now taking place more swiftly, with registration in six months becoming a reality. It now seems that, following implementation by the Colombia Trade Mark Office of Administrative Resolution 48348, the average time for registration has dropped to four months. This is clearly good news for trade mark applicants.

Source: "COLOMBIA: Trademark Registration Now Takes As Little As Four Months" by Jorge Chávarro (Cavelier Abogados, Bogota), published in the INTA Bulletin, October 15, 2014, Vol. 69, No. 19.