Application rejected in disregard of Council of State's resolution

The Colombian Trademark Office has rejected M Zanetti Industries Inc's application for the registration of the trademark SEGAFREDO ZANETTI EXPRESSO, thereby disregarding an earlier resolution of the Council of State (Resolution 19451, April 28 2009).

In October 2007 the Council of State (Colombia's highest administrative court) issued a resolution stating that companies belonging to the same group were allowed to register similar trademarks provided that: 
As the Council of State is Colombia's highest administrative court, the Trademark Office was bound by the resolution and should have changed its policy. However, on April 28 2009 the office rejected M Zanetti's application for the registration of the trademark SEGAFREDO ZANETTI EXPRESSO for goods in Class 30 of the Nice Classification on the grounds that it was confusingly similar to the trademark SEGRAFREDO ZANETTI, which is owned by Industria Nazionale Coloniali Segafredo SpA, another company of the Segafredo Zanetti group.
The Trademark Office held that each company of a commercial group is an independent entity. The office further stated that it has the obligation to protect not only the interests of private companies, but also the public interest. The office considered that consumers might be misled if different companies of the same group use similar trademarks for similar or related products.
Finally, the office established that different companies of the same group may use similar trademarks for identical or similar products only where:

  • the trademarks are owned by one of the companies; and
  • the company in question grants licences to use the marks to the other companies of the group.
Margarita Castellanos, Castellanos & Co, Bogota

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