Burger King fails to register 'king' mark in Class 29

In a ruling dated February 14 2013, the Colombian Council of State has affirmed the refusal of an application filed by Burger King Corporation for the registration of the figurative trademark KING DE POLLO, depicted below, to cover goods in Class 29 of the Nice Classification.

The Council of State found that the coexistence of the mark with the following trademark, which is owned by Colombian company Kokoriko Ltda and covers services in Class 42 ("restaurants", currently included in Class 43), could generate confusion among consumers.

In addition, the Council of State deemed that goods in Class 29 and services in Class 42 are closely related, as services in Class 42 (currently Class 43) include the preparation of goods in Class 29, and such products and services aim to provide food for humans.

Finally, the Council of State established that the well-known character of a trademark cannot be claimed in order to obtain a trademark registration. It also found that Burger King could not claim to have acquired rights in the term 'king', as this would mean that, in all cases in which Burger King intends to register a trademark including 'king', the Trademark Office would be forced to grant the application without conducting a registrability study, the aim of which is to protect consumers and third-party rights.

This decision thus disregards previous trademarks rights of Burger King in the country in favour of a Colombian registrant.

Margarita Castellanos, Castellanos & Co, Bogota