Bacardi's mark not famous enough to block competitor's registration

In Bacardi & Company Limited v Tropicola SA (Venezuelan Industrial Property Bulletin 456, Volume IV, May 9 2003), the Venezuelan Ministry of Production and Commerce has upheld a Trademark Office (TO) decision to reject Bacardi & Company Limited's opposition to the registration of 'Hatuey' as a mark for beers. The ministry found that Bacardi's submissions to prove that its own HATUEY mark, which is not registered in Venezuela, is well known - and thus warrants protection - did not meet the TO's evidence standard.

When Tropicola SA, a well-known Cuban drinks producer, applied to register 'Hatuey' in Venezuela as a trademark for beer, Bacardi filed an opposition on the grounds that it owns registrations for the word mark and design HATUEY in various countries worldwide, including Colombia and Ecuador, which, like Venezuela, are part of the Andean Community.

The TO rejected Bacardi's opposition. It found that there was no evidence that Venezuelan consumers knew the HATUEY mark. Bacardi appealed.

The TO Board of Appeals upheld the decision, finding that Bacardi's mark is not well known by either the general public or people directly involved in the beer industry.

On appeal, the Ministry of Production and Commerce affirmed. It found that Bacardi's submission of copies of (i) worldwide trademark registrations, and (ii) invoices for the sale of HATUEY products in the United States did not meet the TO's standard of proof to declare that a mark is well known. Besides the documents submitted by Bacardi, the TO's practice is to require at least the following documents:

• advertising figures;
  
  
• affidavits from local consumers;
  
  
• samples of the product; and
  
  
• inventories of the product.

Ricardo Fischer, Hoet Pelaez Castillo & Duque, Caracas