The General Court has issued a judgment in Case T-358/21, Hotel Cipriani SpA v. European Union Intellectual Property Office – Altunis-Trading, Gestão e Serviços, Sociedade unipessoal, Lda, highlighting several relevant issues regarding the concept of genuine use of a specific subcategory of goods. In that judgment, the General Court provides guidelines on how to conduct a comprehensive assessment of all the evidence submitted to the European Union Intellectual Property Office, as well as the criteria to be followed in determining the existence of a distinct subcategory of goods or services, based on the evidence presented to that Office.

Preliminary Remarks

On November 21, 1997, Altunis-Trading, Gestão e Serviços, Sociedade Unipessoal, Lda filed an application for registration of a European Union trademark consisting of the figurative mark CIPRIANI. The application sought protection for goods in Classes 29 and 30. The registration for this application was granted on January 9, 2002, under number 000683250.

On January 24, 2019, Hotel Cipriani SpA filed a petition for revocation on the grounds of nonuse against European Union trademark No. 000683250, CIPRIANI (figurative), in connection with all the goods for which it was registered.

After the owner of the contested trademark submitted evidence of use, on June 16, 2020, the Cancellation Division issued a decision partially granting the request for revocation due to lack of use. Consequently, the registration of the trademark in question was maintained only in relation to “Edible oils” in Class 29 and “Rice; Cereal-based preparations, bread; Vinegar”in Class 30.

On July 31, 2020, Hotel Cipriani SpA filed an appeal against the decision issued by the Cancellation Division. In a decision dated April 27, 2021, the Board of Appeals dismissed the appeal.

Hotel Cipriani SpA appealed the decision issued by the Fourth Board of Appeal to the General Court, citing four grounds. The first of these related to the assessment of a specific piece of evidence that had been submitted to the European Union Intellectual Property Office by the appellant but had not been taken into account due to a computer error on the eSearch portal. The second, third, and fourth grounds referred to an alleged error in the assessment of the use of the contested trademark.

Court Decision

With regard to the appellant’s arguments concerning an alleged incorrect assessment of the evidence of use of the contested trademark as registered, the Court of Justice recalled that the use of a European Union trademark in a form that differs in elements that do not alter the distinctive character of the trademark in the form in which it was registered must also be considered genuine use for the purposes of Article 18(1) of Regulation (EU) 2017/1001 of the European Parliament and of the Council of June 14, 2017, on the European Union trademark.

In this regard, the Court upheld the position taken by the Board of Appeals, finding that although certain products depicted in brochures and commercial catalogs included a version of the trademark with slight modifications, there was sufficient evidence of use to establish that those products had been marketed under the figurative trademark as registered.

The Court also found that the evidence of use submitted by the owner of the contested registration was sufficient to demonstrate that the sale of the goods in question had taken place during the relevant period, on a frequent basis, and in quantities that could not be considered merely symbolic.

With regard to the Class 30 goods at issue—for which actual use had to be demonstrated (“Rice; Cereal-based preparations, bread; Vinegar”), the appellant contended that the actual use of the trademark in question for various types of pasta, panettone, and focaccia was not sufficient to establish that it had been used in connection with the product category “Cereal-based preparations, bread,” insofar as the appellant considered that “Pasta” constituted a separate subcategory of “Cereal-based preparations.”

Those arguments were rejected by the Court, which, citing well-established case law of the Court of Justice of the European Union, held that what determined whether pasta, panettone, and focaccia constituted a subcategory of products that would be perceived as a distinct subcategory was whether they were essentially different and whether they had different purposes and intended uses.

After conducting an analysis based on those criteria, the Court held that it was impossible to consider pasta, panettone, and focaccia as separate subcategories within the class “Cereal-based preparations,” for which the contested trademark was registered, given that the purpose of all of them was to be consumed by people to satisfy their nutritional needs.

Comments

This judgment of the Court of Justice sheds light on how minor modifications made to a registered mark should be considered when the mark is used with differences that do not have the capacity to alter the distinctive character of the earlier mark as it was entered in the Register. In addition, it provides valuable guidance on the criteria to be followed in determining whether certain goods are capable of constituting an independent subcategory of goods or services. Specifically, for the purposes of determining whether an independent subcategory of goods or services exists, it must be capable of being perceived as such by consumers, with its purpose and intended use being the most relevant determining factors in this regard.

(This article was previously published in WTR in January 2023 under the title “General Court Considers How to Establish an Independent Subcategory of Goods.”)

Sara Navarro Joven, attorney at ELZABURU

Much has happened since the Republic of Myanmar announced in 2019 the enactment of what will be its first modern trademark law. The country has weathered a pandemic, is grappling with a civil war that remains unresolved in light of the recent atrocious attacks, and is embroiled in a military conflict of global significance. It is no surprise, therefore, that the law’s announced entry into force has been delayed by several years.

On April 1, 2023, the State Council of Myanmar issued Notice No. 82/2023 announcing the entry into force of the new law. Therefore, the law has been in full force and effect since April 1, 2023.

In October 2020 , the first phase of the new process—the “Soft Period”— began , during which priority was given to trademark owners who already had a registration based on a Declaration of Ownership (DOO) with the Office of the Registrar of Deeds. Those owners could file an application to preserve their “priority rights.”

This Notice, dated April 1, 2023, initiates the second phase of the procedure, during which applicants may reclaim their previously acquired rights, complete the formalities to establish priority, pay the official filing fees—the amount of which has not yet been disclosed—and appoint a representative.

Once Phase Two is complete (estimated for late April or early May 2023), Phase Three, or the “Grand Opening, ”will begin. During this phase, the Registry will be open to anyone interested in filing a new trademark application, and applicants will be assigned a filing date for their application.

All applications will undergo a review process that is expected to take about one year, after which the process will be finalized with the payment of the second installment of the fee.

Once the new law has been enacted and the registration procedure is in place, it is expected that Myanmar will announce its accession to the Madrid Protocol, as its Asian neighbors have donein previous years.

Cristina Arroyo, Associate Partner, Director of International Brands.

Since the United Kingdom left the European Union—and despite its internal and economic crises—it has remained the top destination for Spanish investment. There is no doubt that, whatever the case may be, the United Kingdom has played, plays, and will continue to play an essential role on the world stage, even ranking among the very top in terms of economic importance.

It is therefore not surprising that, since the announcement of the UK’s departure, the Spanish government has been analyzing the impact that Brexit has had on Spanish industrial sectors and companies and has been working on possible aid measures to help them establish themselves in the British market, in an effort to mitigate the rise in export costs, among other challenges that have emerged.

Interested parties must apply through ICEX for the grants provided for in Royal Decree 114/2023, dated February 21, which establishes the regulatory framework for the direct award of grants under the ICEX-BREXIT Program of ICEX España Exportación e Inversiones, E.P.E.

Companies and self-employed individuals adversely affected by Brexit may apply for and receive this aid, provided they meet a series of requirements set forth in the Royal Decree and have been legally incorporated in Spain or are self-employed individuals registered in the Special Regime for Self-Employed Workers, exporters, or investors in the United Kingdom who have been adversely affected by Brexit; as well as having successfully completed an administrative procedure governed by the aforementioned regulation and aimed at recovering the expenses. Among other conditions, applicants are required, as is logical, to provide justification for the financial loss suffered as a result of Brexit and to demonstrate that the grant was used for its intended purpose. The entire procedure is also subject to state control and supervision.

Eligible expenses include certain costs related to intellectual and industrial property, such as those associated with the registration of trademarks, patents, web domain names, and designations of origin; costs of adapting product and service labeling, packaging, and certification to the British market; and costs of legal advice and legal defense regarding the trademark and its approval. Such expenses will always be considered eligible within the framework of a comprehensive export project.

This support is certainly welcome as we seek to boost the economic vitality of our small and medium-sized enterprises as they pursue their business ventures to export to the United Kingdom.

Cristina Arroyo Meneses, Attorney and Director of International Trademarks at ELZABURU

In the Official State Gazette (BOE) published last Wednesday, February 15, the newly created Section 32 of the Provincial Court of Madrid was finally designated as the specialized section responsible for hearing, as the court of sole instance, appeals against decisions of the Spanish Patent and Trademark Office (OEPM) in matters of industrial property, provided that the administrative remedies have been exhausted.

This Section 32, which replaces Section 28, also covers appeals in matters of intellectual property; industrial property; unfair competition; advertising; and antitrust.

The news couldn’t have come at a better time. On January 14, the new jurisdictional system took effect, granting the Provincial Court—at the “expense” of the contentious-administrative jurisdiction—the authority to hear appeals against all decisions made by the Spanish Patent and Trademark Office (OEPM).

Since the Provincial Court of Madrid is located in the same territory as the headquarters of the Spanish Patent and Trademark Office (OEPM), it is called upon to play an essential “case-law” role with respect to this new jurisdictional framework. This Court will always have jurisdiction, without prejudice to the plaintiff’s right to choose the Provincial Court corresponding to his or her place of residence, provided that the jurisdiction in question has specialized commercial courts.

We welcome this new section, and... thank you in advance!!!!

Maria Cadarso, Associate at ELZABURU.

On January 14, 2023, a new regulation governing invalidity and revocation proceedings in Spain will take effect, under which the Spanish Patent and Trademark Office (OEPM) will have jurisdiction to hear and decide invalidity and revocation proceedings relating to trademark and trade name registrations.

This shift away from court proceedings—which stems from the implementation of Directive 2015/2436 on the approximation of the laws of the Member States relating to trademarks—means that, as of January 14, such actions for invalidity and revocation may no longer be brought before civil courts, unless they are filed as a counterclaim in an infringement action.

Another new development is that decisions by the Spanish Patent and Trademark Office (OEPM) that exhaust the administrative remedies will be subject to review by the civil courts—not only those resolving new actions for nullity and lapse, but also those OEPM decisions resolving industrial property rights proceedings, including both applications and oppositions, whether relating to trademarks, trade names, designs, or patents.

This reform is expected to simplify legal actions and procedures, as well as reduce the costs of such procedures.

If you have any questions or would like more information, please contact your usual point of contact or send an email directly to elzaburu@elzaburu.es.

NULLITY

Under what circumstances may a nullity proceeding be initiated?

It may be requested on relative grounds or on absolute grounds.

The relative grounds that may be asserted to seek invalidation are essentially the same as those that may be invoked in opposition proceedings, in particular, prior rights recognized by law.

The absolute groundson which an action for annulment may be based are as follows:

• Whether the signs lack distinctiveness, are generic, descriptive, customary, misleading, or contrary to the law, public order, or public morals;

• Whether the signs consist exclusively of the shape or other characteristic dictated by the nature of the product or necessary to achieve a technical result, or whether they confer substantial value on the product—precisely because they are creations that would be more appropriately classified under other forms of industrial property, such as designs, industrial models, or patents;

• Signs that infringe upon designations of origin, geographical indications, traditional wine terms, guaranteed traditional specialties, and plant varieties that are protected under Union law or international agreements to which Spain is a party;

• That the symbols reproduce or imitate state emblems, official regulatory symbols, and emblems of intergovernmental organizations;

• That the marks in question were applied for in bad faith. Factors taken into account in determining whether this requirement is met include identity or similarity with prior marks, possible knowledge of a prior mark, a prior relationship with its owner, lack of intent to use the trademark, etc.

An application for invalidation may be filed against all the goods and services covered by the contested registration or against a portion thereof.

When can a nullity proceeding be initiated?

At any time, bearing in mind that the right to file an application for relative invalidity expires five years from the time the applicant for invalidity became aware of and tolerated the use of the sign sought to be invalidated.

Actions for absolute invalidity, on the other hand, are not subject to a statute of limitations and may therefore be filed at any time after the trademark is registered.

In what cases can this nullity proceeding not be initiated?

A relative nullity proceeding cannot be upheld if:

• The person seeking to initiate the proceeding has tolerated such use for a period of five consecutive years with knowledge of that use, unless the application was filed in bad faith;
• The party seeking to initiate the proceeding has expressly consented to the registration of that trademark.

For its part, proceedings for absolute nullity may not be initiated if:

• The mark lacked distinctiveness; it was descriptive, generic, or common at the time the application was filed, but it acquired distinctiveness for the goods and services for which it is registered prior to the filing date of the application for invalidation.

Who can initiate these nullity proceedings?

Generally speaking, you may file a petition for annulment,

• Any natural person or legally incorporated legal entity that considers itself aggrieved and has standing to sue, including—in certain cases and depending on the rights being asserted—certain groups or organizations representing manufacturers, producers, service providers, or merchants, as well as consumer or user associations.
• Holders of prior rights recognized by law, as well as licensees authorized to do so.

This procedure may be based on one or more prior rights, provided that they belong to the same owner.

What does it mean when a trademark is invalidated by the OEPM?

Except in those cases or circumstances expressly provided for by law, the trademark or trade name is deemed never to have had any legal effect—that is, as if it had never existed.

EXPIRATION DATE

Under what circumstances can one request the administrative revocation of a Spanish trademark or trade name?

The grounds on which a request may be made for the cancellation of a trademark are as follows:

• If, within five years from the date of its registration, the trademark or trade name has not been put to genuine use in Spain for the goods or services for which it is registered, or if such use has been suspended for an uninterrupted period of five years;

• That the trademark or trade name has, through the owner’s actions or inaction, become a common designation for the goods or services it distinguishes;

• That the use of the trademark by its owner or an authorized third party may mislead consumers, with particular emphasis on misrepresentations regarding its nature, quality, or geographic origin.

A declaration of expiration may be total or partial, covering all or part of the goods or services identified by the trademark.

Is it possible to start using or resume using a trademark to prevent it from expiring due to nonuse?

Yes, provided that such commencement or resumption does not occur within the three-month period immediately preceding the filing of the application for revocation and the trademark owner was aware that such an application might be filed.

Are there any justifiable reasons for the nonuse of a trademark?

Yes, circumstances beyond the owner’s control—such as import restrictions or other official requirements imposed on the goods or services for which the trademark is registered—will be recognized as justifiable grounds for non-use.

When does the declaration of a trademark's expiration take effect?

By default, the effects of revocation will be retroactive to the date of the revocation request. However, at the request of a party, the decision on the revocation request may set an earlier date on which any of the grounds for revocation mentioned above occurred.

Cristina Velasco, Junior Associate at ELZABURU

Belize, a small country in the northeastern corner of Central America that is a member of the Commonwealth, has English as its official language.

Belize has just announced that it will join the Madrid System effective February 24, 2023. This small Central American country will become the 129th member of the System, which already includes other countries in the Americas such as the United States, Canada, Brazil, Chile, Mexico, Colombia, Jamaica, Samoa, Trinidad and Tobago, Antigua and Barbuda, Cuba, and the former Dutch Antilles.

A Caribbean country with an economy that relies primarily on agriculture (mainly sugar and bananas) and on a growing tourism industry thanks to its idyllic setting, although it is not entirely free from conflict precisely because of its strategic location. It has significant mineral and oil production.

A palapa at sunset at the end of a pier in Placencia, Belize

In any case, this is an important jurisdiction for our Spanish clients, who often include it in their trademark protection plans.

There are some unknowns surrounding its incorporation into the Madrid System. The first issue to consider is language. The second is the harmonization of local requirements regarding the declaration of use or non-use mandated by national law. It is likely that it will still be necessary to comply with local formalities even when opting for a form of international protection. In any case, let’s wait for the entry into force to be officially confirmed, and as always, we’ll see how things unfold as we gain practical experience.

Cristina Arroyo, Director of International Brands at ELZABURU

[Background]

In July 2012, Dongfang Mingri (Jinjiang) Import & Export Co. (“Dongfang Mingri”) filed an application to register the word mark “奔富酒园” in Chinese characters (in English: BEN FU WINERY, No. 11157214), which was granted in December 2015, designating, among other things, goods such as “wine, brandy” in Class 33. Following registration, Dongfang Mingri began using the trademark for wine products in the Chinese market.

Southcorp Brands Pty Limited (a subsidiary of Treasury Wine Estates, “Southcorp”) filed an application to invalidate the registration of the contested trademark “奔富酒园” in March 2016, on the grounds that the contested trademark was similar to a sign (“奔富” (pronounced: BEN FU)) that had already been used by certain Southcorp distributors and enjoyed substantial influence, in addition to the fact that the owner of the contested trademark had registered a large number of trademarks that were reproductions, imitations, or translations of well-known third-party trademarks, which was contrary to the principle of good faith.

The Trademark Review and Adjudication Board decided to invalidate the registration of the contested trademark, finding that there was a clear intent to take unfair advantage of the reputation of well-known trademarks, engage in unfair competition, and seek illegal profits, thereby violating the principle of good faith and disrupting the proper administration of the trademark registry and fair and orderly market competition. Dongfang Mingri’s activities were found to constitute“acquisition of a registration by other improper means,”as set forth in Article 44(1) of the Trademark Law of 2014 (unchanged in the 2019 Amendment to the Trademark Law).

The Beijing Intellectual Property Court rejected Dongfang Mingri's appeal, which had been remanded by the Beijing High Court.

The case is finally referred to the Supreme Court of the People's Republic of China.

[Decision]

The Supreme Court first summarized the key issue in the case, which was to determine whether the contested trademark “奔富酒园” had been registered through other improper means, such as those prohibited under Article 44(1) of the Trademark Law of 2014.

At the outset, the Court confirmed that the most relevant element of the contested trademark is the first two Chinese characters, “奔富 (BEN FU)”; the combination of the remaining two Chinese characters, “酒园,” means “winery,” which can only be treated as a common description in the relevant industry.

Southcorp provided sufficient evidence to support its argument that the sign “奔富” was first used by some of Southcorp’s distributors in the 1990s to refer to the “Penfolds” wine brand, a Southcorp product. Furthermore, from the perspective of the relevant public, long before the filing of the contested trademark application, the Chinese characters “奔富 (BEN FU)” had been regarded as a transliteration of “Penfolds” and, as a result, established a strong association with it.

Prior to the case at hand, there had been numerous disputes involving trademark infringement and unfair competition between Southcorp and Dongfang Mingri. Previous rulings had found that Dongfang Mingri and its subsidiaries had intentionally misled the public by using promotional materials for the “Penfolds” wine brand in the media, which constituted unfair competition as well as an infringement of the “PENFOLDS” trademark.

Based on the foregoing analysis, the Court concluded that, by filing the application to register the contested trademark “奔富酒园,” Dongfang Mingri intends to capitalize on the reputation of the “Penfolds” wine producer and gain an unfair advantage over it.

Furthermore, the Court found that the fact that Dongfang Mingri and its subsidiaries had registered a large number (more than 250) of trademarks copied from other well-known trademarks—such as “宾利 (BIN LI, a transliteration of BENTLEY)”—for goods and services in classes 33 and 35 went far beyond what is necessary for a normal business.

[Comments]

From the filing of the petition to invalidate the trademark registration to the issuance of the judgment of invalidity, this case has come to an end after six years.

In the appeal proceedings before the Beijing High Court, the TRAB’s decision and the Beijing Intellectual Property Court’s judgment invalidating the contested trademark were based, among other things, on the fact that the contested trademark had been used in commerce by the owner after registration.

Contrary to the opinion of the Beijing High Court, the Supreme Court clarified the concept of“obtaining registration by fraudulent or other improper means”in Art. 44(1) of the 2014 Trademark Law (there are no changes in the 2019 Amendment to the Trademark Law), holding that it should be interpreted as referring to the means employed when filing the application for registration, rather than the purpose of the registration, which is in itself improper.

Therefore, the fact that the contested trademark was put into use after registration—regardless of the level of advertising investment or the effectiveness of the advertising—cannot negate the “improper” nature of the means used to obtain the registration and, consequently, cannot justify the registration of the trademark.

The ruling reflects the Court’s tendency to protect best practices in trademark registration, in a manner consistent with the CNIPA, which has continued to vigorously combat malicious trademark registration in recent years.

Author: Dan Liu

In a recent judgment handed down in Case T-355/21, the General Court of the EU upheld the refusal of the figurative trademark “Polo Club Düsseldorf Est. 1976” for goods in Classes 18 and 25 on the grounds that it was incompatible with the earlier Spanish trademark “POLO CLUB” (fig) for the same goods. In the judgment, the General Court provides an interesting overview of the legal criteria for comparing trademarks, on the basis of which it upholds the EUIPO’s conclusion that the new trademark gave rise to a likelihood of confusion with the prior trademark among Spanish consumers.

In its appeal against the EUIPO’s decisions, the appellant argued, in essence, that there is no likelihood of confusion between the conflicting trademarks because, on the one hand, those trademarks have a low degree of overall similarity and, on the other hand, the earlier trademark POLO CLUB (fig) lacks distinctiveness or has only weak distinctiveness. The EUIPO found that the goods at issue were identical or very similar. The parties do not dispute this finding; therefore, the focus of the debate centers on the comparison of the trademarks from the perspective of the Spanish consumer.

Decision of the General Court

In response to the plaintiff’s arguments, the General Court notes that assessing the similarity between two trademarks involves more than simply taking a single component of a composite trademark and comparing it with another trademark. Rather, the comparison must be made by examining each of the marks at issue as a whole, which does not mean that the overall impression produced on the relevant public by a composite mark cannot, in certain circumstances, be dominated by one or more of its components.

In the present case, the terms “polo club” are both dominant and the most distinctive elements of each of the marks at issue. These words, “polo club,” are more distinctive than the figurative elements that make up the marks at issue. Furthermore, the only word elements of the earlier trademark are fully included in the trademark applied for, while the other word elements comprising it—namely, the words “Düsseldorf” and “est. 1976”—are considered secondary.

In conclusion, the Court of First Instance finds that the marks at issue exhibit, from a visual standpoint, at least a low degree of similarity; from a phonetic standpoint, at least a moderate degree of similarity; and from a conceptual standpoint, a high degree of similarity. In those circumstances, as the Board of Appeal correctly noted, the similarities between the marks at issue—in particular, from a phonetic and conceptual standpoint—cannot be offset by the existence of visual differences. For all those reasons, the Board of Appeal correctly found that there was a likelihood of confusion within the meaning of Article 8(1)(b) of the EU Trade Mark Regulation.

Comment

From my perspective as a Spanish consumer, I believe that the Court’s conclusion—and, prior to that, the EUIPO’s—is correct. However, it would have been interesting to see the Court’s assessment had the relevant public been, for example, British consumers prior to Brexit.

On another note, this case illustrates the multitude of factors, circumstances, and even sensitivities that influence the conclusion regarding the possible existence of a likelihood of confusion between trademarks, and it may lead us to consider whether it would be possible for cases of this kind to be resolved exclusively using artificial intelligence-based tools in the not-too-distant future.

Author: José Ignacio San Martín

This article first appeared in WTR Daily, part of World Trademark Review, in June 2022. For more information, visit: www.worldtrademarkreview.com.

• The EUIPO rejected Laboratorios ERN's opposition to the registration of APIAL in classes 3, 4, and 5, based on the earlier trademark APIRETAL in class 5.
• The Court agreed that there was a low degree of similarity between the signs, and no similarity or a low degree of similarity between the goods.
• Market research and certificates dating from 2010, as well as a decision recognizing the brand's reputation dating from 2015, had no probative value.

On March 12, 2022, in Case T-315/21, the General Court dismissed the action brought by the Spanish pharmaceutical company Laboratorios ERN, owner of the APIRETAL trademark, challenging the rejection of its opposition to the APIAL trademark application filed by the German company Nordesta GmbH for goods in Classes 3, 4, and 5.

Background

The opposition was based on two grounds:

• risk of confusion; and
• The trademark applied for would take unfair advantage of the reputation of the earlier trademark or be detrimental to it.

The EUIPO Opposition Division dismissed the opposition on the grounds that:

1. there was no likelihood of confusion; and
2. The opposing party had not demonstrated that its trademark was well-known.

At this stage, the effective use of the earlier trademark for “antipyretic pharmaceutical products” had been established.

On appeal, the EUIPO Board of Appeal confirmed that there was no similarity between the goods in Classes 3 and 4. However, it found a low degree of similarity between the goods covered by the application in Class 5 (“pharmaceutical products for skin care; nutritional supplements”) and the opponent’s goods (“antipyretic pharmaceutical products”). The opponent’s argument that the latter are a subcategory of the more general “pharmaceutical products” was rejected.

The appeal before the General Court sought to refute the Board of Appeal’s findings to the extent that the opponent contended that there was a likelihood of confusion and that the reputation of the earlier trademark had been established.

Risk of confusion

After conducting a thorough comparison of the goods, the Board of Appeals concluded that there was no similarity between the goods protected by the earlier trademark and those claimed in classes 3 and 4; they did not have the same intended use or nature and were not complementary, even though some of them shared the same distribution channels.

With regard to the goods in Class 5, it concluded that they had a low degree of similarity, since they were used differently and are neither complementary nor in competition with one another. It should be noted that consumers will pay closer attention to this type of product, especially prescription products or those requiring the involvement of a medical professional.

Both trademarks shared phonetic and visual elements, identical syllables, and identical beginnings and endings. Despite these similarities, the Board of Appeal found that the difference of three letters and the difference in length resulted in a low degree of similarity. The General Court agreed.

APIRETAL's Brand Reputation

The Court dismissed as inadmissible a market study and an affidavit from the CEO that predated the filing of the appeal before the General Court. This dismissal was based on Article 188 of the Rules of Procedure of the General Court, which does not permit the subject matter of the dispute to be altered by new evidence.

With regard to the evidence submitted to demonstrate APIRETAL’s reputation—which was rejected by the Board of Appeal—the court ruled that the market studies and certificates dating from 2010, as well as a decision by the trademark office recognizing the mark’s reputation dating from 2015, had no probative value. The relevant date for establishing reputation was September 20, 2018.

Comments

Several important conclusions can be drawn from the General Court’s judgment regarding various aspects of the opposition:

• It is essential that any evidence or argument be submitted at the appropriate stage of the opposition proceedings, except in exceptional cases.
• Even when products fall within the same class of the Nice Classification, they may be considered different if they do not share the same intended use, are not complementary, or are used in a different way. This would rule out any likelihood of confusion.
• Proof of reputation does not last forever. The period of time between the date of the trademark application and the evidence supporting the reputation of the opposing trademark cannot be extended. The reputation of an earlier trademark must be in effect as of the filing date of the application.

This article was originally published in World Trademark Review (WTR) in English on March 28, 2022.

By Paloma Querol 

On April 4, 2022, the Chilean government deposited its instrument of accession to the Madrid Protocol, which allows trademark owners to opt for international trademark registration to internationalize their rights.

Chile, one of the continent’s most economically and politically stable and robust countries—vast and rich in natural resources—is now opening the door for its rights holders to take advantage of the procedures administered by WIPO.

The country has a strong capacity for exploiting raw materials, notably in the areas of fishing, mining and metals—especially copper—as well as agriculture and livestock. However, among the sectors that account for the bulk of imports from abroad are petroleum and its derivatives, industrial machinery, and vehicles—not to mention “tourists”—many of whom are European—who visit this vast and rich country each year to experience its natural diversity. It is an attractive destination for foreign investment, particularly from the United States and Europe.

With Chile's accession to the Madrid System, which will take effect on July 4, 2022, it will be possible to include this country among the more than 128 countries already participating in the system.

It seems certain that the future will involve a significant expansion of trademark rights through the Madrid System, which will allow for the inclusion of an ever-increasing number of Contracting Parties. This will undoubtedly streamline the more bureaucratic administrative procedures, while at the same time making trademark management more sophisticated. However, just because a streamlined system is used for certain procedures and parts of the process does not mean that compliance with all the legal requirements of local agencies and laws can be neglected.

By Cristina Arroyo.