The Trademark Office recently rejected several trademark applications containing the terms 'corporation', 'corporations' or similar when the applicant was not a US-based company on the basis that they would result in error or confusion in relation to the applicant.
This new requirement is not contained in Articles 19 or 20 of the Industrial Property Act and instead corresponds to a strict interpretation of the rule under which it is argued that the aforementioned terms could lead consumers to error or confusion regarding the rights holder's identity.
Nonetheless, the Industrial Property Appeals Court dismissed this argument and revoked the Trademark Office's recent decisions, stating that the law does not require a trademark to be concordant with the applicant's corporate structure or organisation. Further, the court established that the term 'corporation' has more than one meaning and is not always used to refer to a US company, so there is no risk of consumers being confused regarding the applicant or trademark owner.
The Trademark Office's criterion has become stricter in recent years and the new concordance requirement between the applied trademark and the applicant is an example of this. The result of this stricter criterion has been the growth of appeal recourses filed before the Industrial Property Appeals Court.
In such a scenario, it is imperative to seek the legal advice of a specialist lawyer, as only licensed lawyers can file appropriate recourses before the court.
For further information on this topic please contact Juan Pablo Zamora Iturra ?at Montt y Cia SA by telephone (+56 22 233 8266) or email ([email protected]). The Montt y Cia SA website can be accessed at www.monttcia.com.
This article was first published by the International Law Office, a premium online legal update service for major companies and law firms worldwide. Register for a free subscription.
