Thursday, 14 October 2010

PUBLICIDAD ALTERNATIVA hits the headlines in trade mark infringement action

IP Tango has been reading with interest of an instance in which a court in Venezuela is said to have ordered an advertising company to cease use of the trade mark PUBLICIDAD ALTERNATIVA for its advertising services, even though the term was descriptive. The story goes like this:

Publicidad Alternativa was in the advertising business since 1998 and may have been the first company in Venezuela to offer advertising options through non-traditional methods such as advertising on buses, other vehicles and mobile billboards. In 2006 its applications to register the words PUBLICIDAD ALTERNATIVA (the Spanish for 'alternative advertising') for advertising services in Class 35 and for paper and printing goods in Class 16 were granted.

A year later, Publicidad Alternativa discovered that another company, based in Valencia, (i) was promoting its own non-traditional advertising services under the same mark, (ii) had incorporated a company under the name Publicidad Alternativa CA and (iii) registered publicidadalternativa.com.ve as its domain name. Publicidad Alternativa was not pleased to hear from a client that a payment owed to it had mistakenly been made to the Valencia company.

Having asked a judge with jurisdiction in Valencia to perform a judicial inspection at the address of the defendant, Publicidad Alternativa obtained evidence that its competitor had used its trade mark without consent. A preliminary injunction was granted in April 2007 and, since the parties failed to agree terms, the case went to trial. Two years later, the court ruled in Publicidad Alternativa's favour, ordering various forms of relief.

IP Tango has heard so much news about the difficulties faced by IP owners in  Venezuela, so it's heartening to hear news of a trade mark enforced against an unlawful user.

Source: "Advertising company successfully enforces mark, despite it being descriptive", article for World Trademark Review by Ricardo Enrique Antequera (Estudio Antequera Parilli & Rodríguez, Caracas), who acted for the plaintiff in this case.

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