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Thursday, 20 June 2013

Patricia Covarrubia

Burger King no more King

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Last week the Colombian ‘Consejo de Estado’ (a Supreme Court in the Administrative field) ratified the decision taken by the Colombian Superintendence of Industry and Commerce (SIC) in regards to the registration of the trade mark ‘King de Pollo’ (Chicken King). After SIC denied the registration of the trade mark ‘King de Pollo’ to Burger King Corp, the company appealed up to the Council of State to revoke the decision (Resolution No. 08350 of May 14, 1998) and thus, to allow Burger King the registration of the said trade mark.

The dispute started on 1996 when Burger King applied for registration of the mark in Class 29 Nice Classification. The application was opposed by a third party, Kokorico Ltd based on its earlier mark ‘King Line’ registered in Class 42 Nice Classification. SIC Directorate upheld the opposition and this was reconsidered and confirmed again on June 2004 (Resolution No. 12522).

My favourite King..
The claimant argued that the mark applied for had a special font and used the word ‘pollo’ which is an expression indicative of the product (Class 29). It went further to explain that the claimed mark was composed and thus indivisible. The mark ‘King de Pollo’ was not affected by the prior existence of the trade mark ‘King Line’ for class 42 because they were different marks in reading and writing. It was noted that Burger King is a valid registered trade mark for Classes 29, 30 and 42, and that the word King was their based brand. They were looking for a new way to indicate a product by adding the word 'pollo', making it more distinctive. It also argued that SIC did not conduct a thorough examination of the sign, since they fractioned the mark omitting the design like the font -- in other words SIC test was salami slice test rather that global appreciations test.

On the other side of the coin, SIC argued that the mark applied for and the registered trade mark were likely to be confused. They do have a common element, which is the expression ‘King’ and in this word is where the distinctiveness rests [why? Just because it is the first word that we see in the mark?]. SIC continued... even though the sign was accompanied by the term ‘de Pollo’, it did not have the required distinctiveness.

I guess then that the mark was not allowed to be registered in two grounds: (1) relative grounds: likelihood of confusion with third party trade mark and (2) absolute grounds: lack of distinctiveness. However, regarding absolute grounds, surely the mark has acquired distinctiveness through use (secondary meaning) which is a straightforward case proven by evidence. The one that I cannot come to terms is the mark being confused by the earlier mark. I cannot see how the sign ‘King de Pollo’ and ‘King Line’ can be confused – even if we do a salami slice test! The second word does not mean the same (they are even different languages), and they are not written nor pronounced in the same way.

Source: newspaper La República.

Patricia Covarrubia

Patricia Covarrubia