Wednesday, 8 October 2014

Colombia: a notorious mark for UNILEVER

The Colombian Superintendence of Industry and Commerce (SIC) received an application to register the word mark ‘Lavomatic’ in Class 9 of the Nice Classification i.e. digital recording media, cash registers, apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity, and the like.

Once the application was published, UNILEVER opposed to the registration on relatives grounds: Art 136 (a) of CAN Decision 486 (the Andean Common Intellectual Property Regime) i.e. identical marks for identical or similar goods/services; and (h) “consist of a total or partial reproduction, imitation, translation, transliteration, or transcription of a well-known sign belonging to a third party without regard to the type of product or service to which it shall be applied, the use of which would lead to a likelihood of confusion or mistaken association with that party,; taking unfair advantage of the prestige of the sign; or weakening its distinctive force or its use for commercial or advertising purposes.”

UNILEVER is the owner of the word mark ‘Lavomatic’ in Class 3 i.e. bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices. Consequently, while the word marks were identical, the goods were neither identical nor similar (as required by Art 136(a) Decision 486). SIC further stated that when comparing the products no direct or indirect relationship would generate the public/ consumer to be confused – “consumers will be in the ability to identify and individualize one from the other and recognize that [the products] belong to different entrepreneurs."

However, UNILEVER claimed that its mark was ‘well-known’ and submitted evidence such as: investment of d $2,000 million in the period between 2011 and 2013 on advertising and promotional activities; revenues of $ 11,876 million in 2011, $ 29,000 million in 2012. It requested its mark to be declared ‘notorious’. After examining the evidence, SIC ruled that ‘Lavomatic’ by Unilever is a well-known trade mark and thus, the opposition action was successful under Art 136(h) Decision 486.

Source La Republica.

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