A combination of descriptive words may be registered


The Colombian Trademark Office (TO) has allowed an application for registration of the mark PAGA EL IVA Y VUELVE POR EL (meaning 'pay the VAT (value added tax) and come back for it') and related design (Resolution 026256).

Grandes Superficies de Colombia SA applied to register PAGA EL IVA Y VUELVE POR EL for services in Class 35 of the Nice Classification. At first instance, the TO refused registration on the grounds that the trademark was not sufficiently distinctive and was descriptive pursuant to the restrictions set out in Andean Community Decision 486 on a Common Intellectual Property Regime.

On appeal, the TO allowed the registration. It noted that descriptive words that are of common use in trade cannot be protected as trademarks. However, it stated that phrases featuring descriptive words that (i) identify products or services, and (ii) allow the public to distinguish these goods and services can be registered. The decision, therefore, suggests that it is possible to register a combination of descriptive words if the combination as a whole is distinctive.

Fernando Triana and Carolina Villegas-Jaramillo, Triana Uribe & Michelsen, Bogota

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