Monday, 17 November 2014

Scientology Church, ‘Prosperity’ and the Washington Convention: what do they have in common?

For one reason or another, our society has become aware of the Scientology Church, which was founded in 1952 by L. Ron Hubbard, a writer of science fiction at the time. Some of us, in the legal arena, are perhaps more prompted to hear about the Scientology church. In the area of intellectual property we hear cases on copyright and trade secrets for example. The case that I read over the weekend in the newspaper La Republica caught my attention, since this time was about trade marks.

The party in question is the World Institute of Scientology Enterprises (WISE) which describes itself as ‘Uniting all organizations and professionals using L. Ron Hubbard’s management technology.’ Back in October 2013 WISE opposed to the registration of the mark ‘Prosperity’, requested by Jafer Limited (here) in class 16 (magazines and publications, promoting fashion, beauty and personal care, as well as selling cosmetics, makeup, perfume, among others). The arguments brought by WISE in both instances of the Colombian Superintendence of Industry and Commerce (SIC) were as follows:
• Lack of distinctiveness, and
• the existence of the registered mark ‘Prosperity’ belonging to Wise.

This latter argument was examined by SIC. According to WISE, the sign requested “fall within the grounds of non-registrability” as established in Article 7 of the General Inter-American Convention for Trademark and Commercial Protection (Washington Convention). Colombia is a member of such agreement (in force since 1936) as well as many other Latin American countries and the United States. The convention is hosted by the Organization of American States.

Legal background...to prosperity
Mr Camilo Suarez, IP lawyer and an associate at prietocarrizosa firm explained that "trademark oppositions based on different rules to the Decision 486 are not as common”. He continues to explain that opposition based in other legislative provisions “are reserved for cases like this where very particular characteristics of internationality are imposed and they are exceptions to the principle of territoriality in trademark law.” In the same line, it is clarified that not only Decision 486 (CAN Common Intellectual Property Regime) is applied to protect brands, but also other legal instruments such as the Paris Agreement and the Washington Convention.

Art 7 of the Washington Convention however requires that apart from demonstrating that the signs are similar, it must also prove that the applicant “had knowledge of the existence and continuous use in any of the Contracting States of the mark on which opposition is based upon goods of the same class”. WISE is the owner of the ‘Priority’ mark in the United States in class 16 of the Nice Classification.

Jafer Ltd appealed to the decision arguing that the mark was cancelled for non-use in Class 16 of the Nice International in Colombia in 2013 ( Resolution 78474-2011). It also argued that there was no evidence that it had prior knowledge of the existence of that sign. The superintendent disagreed and the first instance decision was upheld and thus, granting “extra- territorial protection to the foreign trademark."

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