Wednesday, 21 October 2009

Colombia – Legal victory for Coca Cola over trade mark

Coca Cola has won a seven-year legal battle maintaining therefore the mark ‘Santa Clara’ for mineral water. The Consejo de Estado acted under the Tribunal de Justicia de la Comunidad Andina (TJCA) guidance and annulled the registered mark ‘Agua Santa’.

The case goes back to 2001 when Juan Carlos Arango registered the trade mark ‘Agua Santa’ for natural water. To this stage, Panamco SA (Coca Cola’s representative Industry for this country) opposed to the registration considering that it was similar to ‘Santa Clara’. The Superintendence dismissed the allegations in view that they were unfounded.

Panamco SA appealed to the Consejo de Estado (Registry Control Organisation) claiming that the marks were similar when assessed. Moreover, it was alleged that there were no added extras to the word ‘Santa’ which will make the mark distinguishable from ‘Santa Clara’. On the contrary, the Superintendence insisted that when the marks were examined there was not phonetic similarity.

The Consejo de Estado consulted the TJCA which held that when assessing composite marks, a global appreciation test must be applied. Such a test, continued the Court, needs to examine the visual, aural or conceptual similarity of the marks in question. To this end, the Consejo de Estado held that the marks were visually and phonetically similar and annulled the disputed mark.

In my opinion, the TJCA was right to apply a global appreciation test and to direct the national institution to an appropriate conclusion. Moreover, there was the need to consider that the goods were identical and thus factors such as trade channels, use, and users were the same. Added to this, there is the fact that the word ‘Agua’ (water) was a generic term. Yet, the Court asked to apply correctly the global appreciation test to the compose mark – leaving aside any salami slice approach.

The decision of the TJCA in Spanish can be accessed here.

Prepared by (Visiting Lecturer University of Buckingham), posted by Aurelio

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