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Monday 27 October 2014

Patricia Covarrubia

Colombia: a toy decision

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Back in October 2013 the Colombian company ‘Two of You’ applied for the registration of the mark ‘Toy Two of You’ in class 3 of the Nice Classification (i.e. nail varnish/polish, nail art stickers, perfumes,among others). Once the application was published and no opposition was filled, the Superintendence (SIC) started to examine the registrability of the sign.

At such stage, SIC encountered the registered mark ‘Toy Story’ in class 3 by Disney Enterprise. Due to this finding, the office believed that the signs were similar and thus, would cause confusion among the public. Therefore, the application was rejected on relative grounds of refusal Art 136 Andean Community (CAN) Decision 486.

Two of you appealed to the decision arguing that the marks were not similar since they were orthographic differentiated, especially visually. While they shared the word 'Toy' there were other element that differentiated them. The appealed succeed and the mark ‘Toy Two of you’ have been successfully registered (Dossier No 13246132).

The newspaper La Republica published the point of view of IP lawyer Guillermo Navarro, who said that the first instance decision "was an exaggerated interpretation, and out of context”. And thus agreeing with the appeal outcome. Moreover, he asserts that the signs contained enough differences and that this was showed by Disney not filing opposition. Another IP lawyer opinion was also published, that of Miss Julia Carmen Monroy, at Wolf & Mendez who also agreed with the appeal conclusion. She said that "Toy Story is a well-positioned brand in the market, and … consumers do very well differentiate the two products.”

Patricia Covarrubia

Patricia Covarrubia