Monsieur Periné, a Colombian musical
group, achieved recognition of its name as a well-known trademark. This
declaratory was made by the Superintendence of Industry and Commerce (SIC)
within the opposition process issued by this musical group against the register
of the mixed mark ‘Monsieur
Perruné’
filed for registration in class 41 by Emepe S.A.S., a company offering live music
performances and services. One of the arguments used by the company in its
defence was that its application for registration of the trademark was issued
before (14 October 2016) to that one made by Monsieur Periné (11 November
2016). Under Article
136 of the Decision 486 of the Andean Community of Nations (CAN) the signs that would unduly harm a third-party right
cannot be registered as marks, especially when ‘they
are identical or similar to a mark previously
filed for registration or registered by a third party in respect of the same
goods or services, or for goods or services regarding which the use of the mark
could cause a risk of confusion or association.’ (Emphasis added)
However,
more than an argument against the opposition issued by Monsieur Periné, this
just goes to show that the musical group is acting in line with the Colombian
trademark law. The opposition is a legal proceeding that anyone with a
legitimate interest can initiate to try to prevent the registration of a mark.
On the matter, Article
147 of the Decision 486 of the CAN establishes that ‘the
opponent shall prove his genuine interest in the market of the member country
in which the opposition is filed, which they must do by applying for
registration at the time of filing the opposition.’ From these two Articles, it
has been interpreted that an opposition can be suited either when there is a
mark previously filled for registration or already registered, or when no
registration exists. Unless the opposition is presented based on the prior
existence of a register, the opposition must be issued together with an
application for the registration of the mark that allegedly could be violated
with the concession of the opposed mark.
Evidently,
Monsieur Periné is a successful musical group otherwise its name would not have
been recognised as a well-known mark. By contrast, Emepe S.A.S. was a little know
company, which apparently was trying to take unfair advantage of the prestige
of Monsieur Periné. This, because of the obvious similarities between the signs
‘Monsieur Periné’ and ‘Monsieur Perruné.’
The
case in which a registered mark is declared well-known within an opposition
process was analysed in a previous post. (See
post here)
Finally,
a document of opposition does not require a petition for the recognition of a
well-known mark, but, if included, the decision must not necessarily be
favourable. For example, the register of the sign ‘Forever Sexy’ filled in
class 25 by Victoria’s Secret was recently denied. The decision was made based
on the prior registration of the mark ‘Forever’ in classes 9, 14, 18, 24, 25,
and 35, a property of Forever 21 Inc. ‘Forever’ was not recognised as a
well-known mark at the end of this process. Nonetheless, due to their
similarity, the mark ‘Forever Sexy’ was not able to be registered.
Post written by Florelia Vallejo Trujillo
Assistant Professor, Universidad del Tolima, Colombia
PhD Candidate University of Nottingham, UK
