Tuesday, 22 July 2008

Too much IMAGINACION? Chile Supreme Court allows opposition in full

In a decision of 16 April 2008 the Chilean Supreme Court rejected the application of Angel Custodio Cabrera to register the word trade mark IMAGINACION for "exhibition services for cultural and educative purposes; organization of sport competitions; conferences and congresses; education and training of medium-level technicians; teaching improvement and consultancy", all in Class 41. Correa & Correa Consultores, opposed, alleging a likelihood of confusion with their own earlier mark IMAGINACCION CORREA & CORREA CONSULTORES, for quite different services in Class 41: "organization services for cultural events provided through conventional means and through all communication channels, especially interactive communication through data, messages, text or a combination thereof, through computers, the Internet and other networks (oral and/or visual), fax and other analogue media (digital and/or satellite)".

The Industrial Property Department upheld the opposition insofar as it referred to "exhibition services for cultural and educative purposes; organization of sport competitions; conferences and congresses", but allowed registration of the mark for "education and training of medium-level technicians; teaching improvement and consultancy", holding that the services were sufficiently different from those covered by the earlier mark to avoid public confusion. After the Appeal Court for Industrial Property Matters affirmed the decision, Correa & Correa appealed to the Supreme Court, arguing that, since the services covered by the later mark fell within the same class as those covered by the earlier mark, the application should be rejected in its entirety. Surprisingly the court allowed Correa & Correa's appeal and rejected the application in respect of all services covered by the application. The court held that services within the same class should not be differentiated in order to reach a decision in opposition actions, as such differentiation was not allowed by the law.

In 2005 Chilean trade mark legislation was amended to provide that trade mark applications must specify not merely the class but also the goods and services for which registration was sought; it was later provided that, in opposition proceedings, a relationship had to be established between the goods and/or services covered by the respective marks, regardless of whether they fall within the same class. This decision appears to undermine this position [source: note by Sergio Amenábar (Estudio Federico Villaseca, Santiago), writing in World Trademark Report].

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