Monday, 10 November 2014

Leasing your business: trade mark management

From Bucaramanga, Colombia comes an interesting case regarding the use of the trade mark ‘El Bambuco’ for the production of strings for musical instruments.

In 1973, Mr Emiliano Navarro founded 'El Bambuco' a factory of strings for musical instruments. On 2011, before his death he leased the commercial property to one of his employees, Mr Salvador Suarez Gonzalez.  When Mr Emiliano Navarro's son  (Nelson Navarro Carreño) applied for the registration of the mark 'El Bambuco', Mr Gonzalez opposed to the application of the said trade mark on the grounds that the sign was identical to his and used for the same business. Mr Gonzales noted that for the last 3 years, he has sustained and built upon the reputation of the said mark. Additionally, Mr Gonzalez registered the company in the Chamber of Commerce of Bucaramanga.

A matter of ownership
In October 2014, the Colombian Superintendence of Industry and Commerce (SIC) the second instance, revoked the decision made by the Directorate of Distinctive Signs (first instance) in which it refused to register ‘El Bambuco’ as a trade mark.

SIC acknowledged that the sign has been used prior the application. However, such right of use was not evident in the lease contract. Mr Nelson Navarro argued that the lease was for the use of the premises rather than the mark. He also argued that the mark applied for has acquired a high level of recognition among consumers for the last 37 years (not the last 3 years).

Another turn on this event was that the sign 'EL Bambuco' in class 15 was previously registered by Mr Emilio Navarro but he did not renewed the mark - expired in November 1996 (see this dossier here). SIC reviewed the evidence provided and determined that it was evident from the lease contract that the sign was existent and that the owner of the sign did not transfer its ownership to the tenant. SIC also heard evidence from two former employees of the factory who recognized that the original owner of the sign was Mr Emiliano Navarro. It was therefore concluded that Mr Gonzales “has always been aware” that the brand belonged to the landlord and that on his death, ownership passed to his heirs.

Source La Republica (in Spanish).

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