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Mutual agreements in the case of confusingly similar trademarks. New jurisprudential position

  • 26 January 2012
  • Articles

Traditionally, in Uruguay, the National Directorate of Industrial Property (DNPI) prohibits registration of two identical or similar marks distinguishing the same products and services, even though there may be an express coexistence agreement between the owners of both.

The grounds for the position taken by the DNPI is that the Administration, rather than just watching out for the interests of the owners of trademarks, must also look after consumers, who may be confused with regard to the origin of the products or services they consume.

This position was recognized expressly by the existing trademark law, Law 17,011, article 22.

Article 22 and the rulings on which it is based, received a lot of opposition from those applying for the rejected trademarks, which were not based on reality.

On one hand the Administration refuses to make the registration, and on the other, the only party that can prevent the use of the trademark is the owner of the registered trademark.

If the trademark holder has an agreement to coexist with the owner of the application of the like or confusable trademark, of course no action will be brought to stop it being used.

Therefore, it is very common that even though registration of confusable trademarks has been denied, they continue to coexist on the market, because their use is tolerated and expressly agreed by both owners.

The Administration cannot stop this use and it cannot protect consumer rights, however much it refuses to register.

This year there were two rulings, one from the Administrative Courts, the jurisdictional body that reviews administrative acts, and another from the Ministry of Industry, which allows coexistence agreements, and which overturned the Rulings of the DNPI which rejected registration of confusable trademarks,

Accordingly, ruling No. 478 dated 7 June 2011: “PRAMER S.C.A. with STATE. MINISTRY OF INDUSTRY, ENERGY AND MINING. Invalidity action (File No. 330/2009), annulled the administrative act of the DNPI, which refused to register the trademark “EL GOURMET.COM”, to protect products falling within International Class 16 products, because of the pre-registered trademark “GOURMET”, belonging to Kimberly Clark Worldwide Inc.

The Court unanimously accepted the petition to annul on the grounds that the claimant is owner of the trademark “elgourmet.com”, and wishes to register this in Class 16, for the purpose of launching a reading product on the market as a complement to its television programs, which can be watched on CABLE TV, through its own signal.

In the meantime, there is a trademark called “GOURMET”, which is pre-registered in the aforementioned category, which belongs to Kimberly Clark Worldwide Inc., which owns a magazine which carries the name of the trademark.

The owners of both trademarks entered into a coexistence agreement for trademark signs, whereby the owner of the pre-registered trademark consents, under certain conditions, to the use and registration of the new trademark, on the understanding that, in this manner, there is no risk that they will cause any confusion.

After analyzing the differences between both trademarks, the judgment continued, stating that the agreement entered into by the owners of both trademarks is the main guarantee that these will not be confused.

In cases such as this, it is the owners of the well-known trademarks who are most concerned that their trademarks are not mistaken for one other.

The conflict between the trademarks and their solution seeks to protect the interests of the producers, and consumers interest reflects the protection of the producer.

Bearing in mind that the main interest in play in this action is that of the producers, if the owners of the “GOURMET”trademark is not aggrieved by registration of the trademark “elgourmet.com”, there is no reason for the Administration to rule to oppose registration of the second.

On the same subject, on 19 August 2011, the Ministry of Industry ruled on an Appeal brought against the DNPI resolution, which rejected the brand BLOW UP! ARCOR, applied for by ARCOR SAIC based on the pre-registration of BLOW UP by VAN DAM S.A. in class 30-, in the file No. 375585, annulling this decision, quoting the aforementioned TCA ruling, and express authorization from VAN DAM S.A. for ARCOR to apply for the similar trademark.

Based on the aforementioned, it would seem that jurisprudential criteria is changing its view of agreements between parties.

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Mutual agreements in the case of confusingly similar trademarks. New jurisprudential positionMutual agreements in the case of confusingly similar trademarks. New jurisprudential position