Coca-Cola victorious in AGUA SANTA dispute

Colombia
On September 10 2009 the Council of State of Colombia cancelled the registration of the trademark AGUA SANTA on the grounds that it was confusingly similar to the earlier mark SANTA CLARA, which is owned by Panamco Industrial de Gaseosas SA, Coca-Cola's bottling company in Colombia.

In 2002 Juan Carlos Arango registered the trademark AGUA SANTA for goods in Class 32 of the Nice Classification (natural water). Panamco opposed the registration based on its earlier trademark SANTA CLARA. The Trademark Office dismissed the opposition on the grounds that the trademarks were not similar. In particular, the office held that although the marks shared the common element 'santa', the overall impression conveyed by the marks was different. The office pointed out that the term 'santa' qualified the term 'clara' in the SANTA CLARA mark, while it qualified the product itself in the AGUA SANTA mark. Therefore, the marks had a different connotation.

Panamco appealed. The Council of State held that the word 'agua' (Spanish for 'water') in the AGUA SANTA mark was a generic term that designated the product itself. Therefore, the AGUA SANTA mark was registrable only if the addition of the term 'santa' rendered the mark as a whole more distinctive. However, even if that were the case, the term 'santa' was the dominant part of the SANTA CLARA mark. 

Consequently, the Council of State compared only the term 'santa' with the SANTA CLARA mark. Citing an interpretation of the Andean Tribunal, the council concluded that:
  • the AGUA SANTA mark did not include any element that would allow consumers to distinguish it from the SANTA CLARA mark; and 
  • the marks were similar from a visual and phonetic point of view.
Therefore, the marks could not coexist on the market without creating a risk of confusion.

Margarita Castellanos,
Castellanos & Co, Bogota 

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