Tuesday, 2 June 2015

Use on related goods may save registered mark from partial cancellation, rules Colombian court

In January of this year the Colombian Council of State, reversing a decision of the Superintendencia de Industria y Comercio, held that the use of a trade mark in connection with related goods is a valid ground on which to resist an application to cancel, in whole or in part, that mark's registration.

In this case Museo El Turron sought partial cancellation of the registration of El Lobos's trade mark EL LOBOS, which was initially registered for all products in Class 30, based on non-use. The application was upheld and the registration confined to sugar, flavour, yeast and baking-powder  -- for which use of the mark was proved. El Lobos sought to have this decision annulled on the basis that the goods excluded from the trade mark registration were competitively connected to those goods for which use was proven.

Following a request to the  Andean Community Tribunal of Justice for a preliminary ruling on the interpretation of the applicable law, the Council of State held that, where the related goods for which use is proved have the same purpose as the excluded goods and are foodstuffs of plant origin prepared for consumption or conservation and marketed in the same channels, partial cancellation should not be ordered.

Source: "COLOMBIA: Use of Related Products Prevents Cancellation" by Jorge Chávarro (Cavelier Abogados, Bogota, Colombia), verified by Danilo Romero (Romero Raad Abogados, Bogota, Colombia), INTA Bulletin, 1 June, vol.70l no.10

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