Thursday, 13 November 2014

Registering numerals in Chile: there's safety in numbers ...

Jeremy November 13, 2014 2 comments:

In a ruling earlier this year the Chilean Industrial Property Court overturned the decision of Chile's National Institute of Industrial Property (INAPI) and allowed the registration of the mark 1818 for products in Class 25.

The applicant, Brooks Brothers Group Inc., sought to register the trade mark "1818" -- the year in which the original Brooks Brothers business was founded. Although this application was unopposed, it was rejected ex officio by the head of INAPI on the ground that it was contrary to Articles 19 and 20e of the Industrial Property Law (Law No. 19,039) because the term “1818” was non-distinctive or descriptive of the products in question.

On appeal, the Industrial Property Court took the opposite view and explained:

“as previously resolved by this Court, numbers from 0 to 9 cannot be registered as word marks, since they allow the composition of the remaining numbers (infinite) of the system; in all other cases, numbers are perfectly registrable, and indeed, easily distinguishable from each other, because each of them represents a different amount. This reasoning justifies the registration of the figure ‘1818’ as a trade mark, given that it has its own distinctive characteristics and a particular appearance allowing it to obtain trade mark protection.”

This is good news -- except perhaps for anyone who wants to register the number "8181" for goods in Class 25, which is identical to "1818! when viewed upside down.

Source: "Court Rules on Registration of Numbers as Trademarks", by Francisco Silva, Silva & Cia., Santiago, Chile, INTA Bulletin vo.69 no.18

Jeremy

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Patricia Covarrubia

AUTHOR

13 November 2014 at 20:35 delete

Indeed, numbers can be distinctive and thus registrable. In this particular case however I have two issues that might be open to debate: 1) the number 1818 appears to be descriptive (the year the business was established) and 2) Has the number 1818 become distinctive alone? I mention this because in the picture provided in the post it appears that the number 1818 is accompanied by another word.

Jeremy

AUTHOR

13 November 2014 at 21:28 delete

Thanks, Patricia -- but I'm happy to debate your points.

First, you suggest that the number 1818 appears to be descriptive of the year the business was established. True -- but it isn't descriptive of goods in Class 25, and surely that's what counts.

Secondly, you are right that in the picture the number 1818 is not used alone. However, the mark applied for was the numeral by itself and the decision turned on whether the number, when used by itself, could be descriptive.

Personally I like the sheep mark best!