Impossibility to register a trademark because it is confused with another one.
Trademark registration consists of a process through which a businessman is granted the exclusive right over a sign that serves to distinguish products or services in the market.
In other words, it provides the businessman with exclusive protection for his trademark, thus having a special protection against third parties that use a similar or identical variant of the same products and services, as well as against those acts that lead to confusion of the consumer or user in the market.
This process brings numerous benefits, as pointed out by the Superintendence of Industry and Commerce on its web page#|1:
- It allows the company to differentiate its product or service.
- Helps ensure quality assurance to consumers. Therefore, it builds trust.
- It can be licensed and, consequently, a source of income.
- It can be more valuable than tangible assets.
One of the most important factors for trademark registration is distinctiveness, we could even say that it is the most important factor, according to what the Andean Court of Justice said in preliminary ruling 30-IP-97 s
“It is the capacity of a sign to individualize, identify and differentiate products or services from others in the market, making it possible for the consumer or user to select them. It is considered as a primary and essential characteristic that every sign must have in order to be registered as a trademark”.
The coexistence of two confusingly similar trademarks that include the same or related products would generate confusion for consumers as to their business origin, since it may be believed that they are the same trademark or trademarks belonging to the same owner, which distinguish a new or the same line of products, since they are also intended for the same type of consumer and have the same marketing channels.
But to analyze the similarity or sameness between products, the nature or structure of the product, its composition and even its very presentation, have less influence than its use, for the purpose of establishing similarities or likenesses.
That is to say that one of the most important criteria, with which it is important to observe is that the products distinguished with the sign in question are not of the same type, linked or of complementary use.
This is why a common cause of impossibility to register a trademark is that it is easy to confuse with another trademark because its signs are identical or similar, this is even typified in article 136 of decision 486 of the Andean Community.
This confusion with trademarks previously registered in Colombia must be studied ex officio by the administration (i.e. it does not need to be alleged) or on the basis of oppositions filed by the interested parties.
Regarding trademarks registered in other countries, or notorious, they must be alleged directly by their owners, establishing the grounds for their opposition, the reason that makes necessary their protection in accordance with the law and demonstrating the notoriety in case this is used as an argument.
Now, in the possibility of filing an application for registration of a trademark existing in another country, but which does not have due protection in Colombia, the possibility arises that the foreign owner opposes such registration, based on the notoriety that it has in the international arena, or, without being notorious, the registration granted in a foreign country is protected from any of the agreements signed by Colombia in which reciprocal treatment between these countries is enshrined.
What aspects are taken into account to define confusability?
According to the SIC (Superintendence of Industry and Commerce):
- a) In the event that identical or almost identical distinctive signs are compared to distinguish the same goods or services, the likelihood of confusion is presumed, for which reason it will not be necessary to provide any type of evidence.
- b) When the signs being compared have a clear similarity, but do not distinguish the same goods or services, the evidence that could have been provided by the person opposing the trademark registration to prove the existing connection between the goods or services in question must be assessed, if necessary, although there may be events in which the similarity and the competitive connection are already evident.
- c) When the signs being compared are not clearly similar, evidence may be provided to demonstrate the likelihood of confusion or confusion already existing in the market.
Tests to determine confusability
In this case the burden of proof (the burden of proving) is on the person opposing the registration of the mark of which he alleges confusing similarity, but what evidence can be provided to establish confusing similarity?
Here we will explain a few that the SIC itself points out as being of great importance, but keep in mind that this is not an exhaustive list, that is to say that they are not the only valid evidence, but that other types of evidence that it considers relevant may be submitted.
- a) Opinion polls: Only if there is proof of its author, making it more reliable if it is conducted by a firm specialized in conducting surveys. The technical data sheet of the survey must be provided, indicating the surveyed population, the geographic scope, the time frame in which the survey was conducted, the questionnaire used and the methodology applied in the preparation of the survey. The representativeness of the sample will depend on the type of product or service for which confounding is to be established; likewise, if the survey is carried out in several cities, it will be more representative than if it is carried out in only one.
- b) Photographs: photographs of the products identified by the marks, provided that the circumstances of time, manner and place in which they were taken can be inferred from them. The photographs should enable the examiner to establish, for example, that the products identified by one or the other mark are available to the consuming public through different marketing channels, or that the products are aimed at a substantially different segment of consumers, among others.
- c) Advertising: If the opposing party provides evidence showing that the conflicting marks have the same advertising media, either specialized magazines or internet pages of the same sector, the evidence will be indicative of less likelihood of confusion than if the media are non-specialized and of general circulation.
Therefore, if you want to start your own brand, remember to check very well the originality of this, that it is distinguished in the eyes of consumers and to have advice from an lawyer with knowledge in trademark registrationBy doing so, you own the right to your trademark and you can make sure that others do not profit from it.