Monday, 27 February 2012

Colombia: a twisted decision?


Recently, the Superintendency of Industry and Commerce of Colombia (SIC) refused the registration of the mark ‘i-Twist by KFC’ sought by Kentucky Fried Chicken International for meat, cheese, fish, poultry and canned vegetables.

SIC’s decision came after Gaseosa Posada Tobon S.A. opposed to the said registration. Gaseosa Posaba Tobon (known as postobon) owns the trade mark ‘twist’ for beer, mineral water, non-alcoholic drinks and other beverages (Class 32 Nice classification, ed 7th). It also owns the trade marks ‘ twist (caracol)’ for goods in Class 33 ( alcoholic drinks but beers) and ‘twist frost’ for goods in Class 32.

According to SIC the word marks have similarities which may present a risk of confusion. Moreover, the trade mark seeks to distinguish related goods and can be seen as complementary in their preparation; both products have same marketing channels, and thus, consumers may not differentiate the product and its commercial origin.

As expected Kentucky Fried Chicken International appealed the decision, arguing that while the mark contains the word ‘twist’, there is not risk of confusion between the marks since the said mark contains other elements and is a composed term i.e. ‘i-twist’ and ‘by KFC’ all together. What is more, they state that this mark has a different character which is given by the type and font of the design.

Doing a little bit of digging at the SIC web page, I searched for the word ‘twist’. I found a few trade marks registered using this term e.g. ‘safe twist’, ‘twist-off’, ‘twister’, ‘twisted pleasure’, and ‘trident sandia twist’, upon others. Can you find any similarity with the trade mark ‘twist’?

I cannot see why SIC in this particular case found the trade mark ‘twist’ to be similar to ‘i-twist by KFC’. There are two things to be considered here: firstly, the opposition mark is ‘one term’ the other is a composed mark and it seems that the English word ‘twist’ is not after all uncommon in the Spanish speaker country of Colombia – thus, can the word twist be monopolized? Secondly, there is the consideration of the market i.e. are they the same goods? In one hand, beverages and on the other, meats and canned veggies. I questioned: are the marketing channels the same? Are they sold in the same shops? Are they placed in the same shelf of the supermarket or convenience stores? I believe that there is a good reason why KFC appealed: similarity between the trade marks and similarity between the goods are not present.

Source magazine MARCASUR.

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