Mariz Gestao e Investimentos Limitada sought to register the words MEN'S FITNESS as a trade mark for goods in Class 25. Colombian company Alpina Productos Alimenticios SA opposed, saying that mark was confusingly similar to its earlier FINESSE registered trade mark for goods in Class 29. The Colombian Trade Mark Office dismissed the opposition and allowed the registration. Alpina then filed an action for the cancellation of MEN'S FITNESS before the Colombian Council of State, pleading both likelihood of confusion and that its FINESSE mark was well known.
The Council of State found that Alpina's FINESSE mark was a well-known trade mark under Andean Community Decision 486, confirming that it was thus entitled to a special degree of protection. It then assessed the risk of confusion, holding the marks to be confusingly similar from visual, phonetic and conceptual points of view: if both marks were used concurrently on the market under equal conditions, consumers would be confused as to the origin of the goods.
The Council added that, according to a pre-judicial interpretation issued by the Tribunal of Justice of the Andean Community, confusion is likely to result from the "joint and synchronized impressions created by the marks" especially since, in assessing the likelihood of confusion, their similarities rather than their differences should be taken into account. Taking this into account, MEN'S FITNESS was invalid.
[source: Fernando Triana, Triana Uribe & Michelsen, Bogota, writing in World Trademark Report]
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