BIOSILK worms its way out of opposition

In Farouk Systems Inc v Multi International SRL (Case 12634-2004/OSD-INDECOPI,
October 14 2004), the Trademark Office (TO) of Peru has dismissed the plaintiff's opposition to the registration of BIOSILK.

Multi International SRL of Bolivia filed an application with the TO to register the mark BIOSILK for goods in Class 3 of the Nice Classification in January 2004. This application was opposed by Farouk Systems Inc of the United States. Farouk argued that it had already (i) registered BIOSILK in Class 3 in Ecuador in 1997, and (ii) applied for registration of that mark in Peru. It also contended that as it was the titleholder of BIOSILK in Ecuador, it had preferential rights to defend the mark in Peru. In addition, Farouk provided evidence that it was the registered owner of a BIOSILK mark in the United States and maintained that, according to Article 147 of Andean Community Decision 486 on a Common Industrial Property Regime and Article 7 of the General Inter-American Convention on Commercial and Trademark Protection of 1929 (the Washington Convention), Multi International's trademark must be denied registration.

In response, Multi International claimed that it had better rights to the BIOSILK mark because it had applied to register the mark in Bolivia in 1995, this application having since matured to registration.

The TO first noted that according to Article 147 of Decision 486, the opposing party must prove that it has a legitimate interest in bringing an objection to registration. The provision indicates that a person who has applied for registration of a trademark in any Andean Community member country (Bolivia, Ecuador and Peru are all member countries), must have a legitimate interest in lodging objections against the registration of a confusingly similar mark in other member countries. Such persons must "demonstrate real interest in operating in the market of the member country where they are filing an objection by applying for registration of the trademark at the moment they express their opposition". Article 147 also states that:

"If an objection is lodged on the basis of a trademark previously registered in any member country under the provisions of this article, the competent national office shall have the authority to deny registration of the second trademark."

Turning to the case at hand, the TO stated that even though Farouk had demonstrated that it had a legitimate interest to operate on the Peruvian market by (i) presenting a copy of its Ecuadorian BIOLSILK registration, and (ii) having filed for registration of the mark BIOSILK in Class 3 in Peru, such interest was not sufficient. This was due to the fact that Multi International had already filed for registration in one of the countries of the Andean Community (Bolivia) in 1995 while Farouk's first Andean Community application (in Ecuador) was in 1997.

In relation to Farouk's claim under Article 7 of the Washington Convention, the TO remarked that this article provides that the owner of a mark legally protected in one of the contracting states (both Peru and the United States are party to the convention) can oppose the registration of a trademark that is either substantially similar to its own mark or capable of causing confusion in the marketplace by any means and procedures available in the country of use or in which the application for registration has been submitted. The opponent must also prove that (i) the person that is using or has applied to register the similar mark had knowledge of the existence and use of the opponent's mark in any of the contracting states, and (ii) the opponent's mark is still in use in relation to products of the same class as the trademark at issue.

The TO stated that, in the case at hand, Farouk had not proved that (i) its mark was still being used or applied in commerce to distinguish products in Class 3 in the United States, or (ii) Multi International had knowledge of such use in any of the contracting states of the Washington Convention. Thus, Article 7 of the convention did not apply.

Accordingly, the TO dismissed the opposition and allowed the BIOSILK mark to proceed to registration.

Gonzalo Ferrero Diez Canseco, Ferrero Lema Solari & Asociados, Lima