Banco Union Colombiano loses LA UNION mark

In Banco Union SA CA v Banco Union Colombiano (Resolution 017676), the Colombian Trademark Office (TO) has ordered the cancellation of the defendant's LA UNION mark for non-use. The TO held that the defendant's use of the trade name Banco Union Colombiano did not correspond to use of the LA UNION mark as there were significant differences between the two.

Banco Union SA CA, a Venezuelan bank, brought a cancellation action before the TO against Colombian bank Banco Union Colombiano's (BUC) registration for LA UNION in Class 36 of the Nice Classification. BUC argued that it was using the word 'Union' as part of its Banco Union Colombiano trade name and that this constituted use of the LA UNION mark.

The TO disagreed with BUC and ordered the cancellation of the LA UNION mark for non-use. It held that evidence of BUC's use of the Banco Union Colombiano trade name did not prove that it had used LA UNION. The TO reasoned that, pursuant to Colombian law, the only acceptable evidence of use, is use that does not alter the distinctive character of the relevant mark. In the case at hand, the TO considered that use of the trade name Banco Union Colombiano altered the distinctive character of LA UNION as a number of new elements had been added, namely the terms 'Banco' and 'Colombiano'. There were further differences, said the TO, since, in Spanish, the term 'La Union' is feminine, while 'Banco Union' is masculine.

Beatriz Jaramillo, Brigard & Castro, Bogota