Court rejects coexistence agreement between Nissan and GM

Peru

By Resolution No 2005-2014/TPI INDECOPI, the Administrative Court of Appeals has rejected a coexistence agreement filed by Nissan Motor Co Ltd and, consequently, refused Nissan's trademark application for NP300.

Nissan had filed a trademark application for NP300 to cover "motor vehicles and parts thereof" in Class 12 of the Nice Classification. General Motors LLC owned the earlier registered trademark N300 for "vehicles and parts thereof" in Class 12, but did not file an opposition against the application for NP300.

The Peruvian Trademark Office proceeded with the comparative analysis of the trademarks and concluded that the parties' marks were confusingly similar. Therefore, Nissan could not obtain a trademark registration for its NP300 mark.

Nissan filed an appeal before the Administrative Court of Appeals, arguing that several trademarks containing the number 300 coexisted in Class 12, such as L300, R-300, T-300 and CROSSMAX CR 300. Additionally, Nissan filed a coexistence agreement entered into between Nissan and General Motors. In the agreement, both parties declared that they would take all necessary measures to avoid any likelihood of confusion among consumers when using the trademarks N300 and NP300.

The Administrative Court of Appeals, after analysing the appeal and the coexistence agreement, determined that, according to the Andean Community Decision 486 on a Common Industrial Property Regime, the law protects not only the interests of trademark holders, but also the interests of consumers. Therefore, even though both parties had signed a coexistence agreement, the court needed to analyse whether the trademarks could cause confusion among consumers.

The Administrative Court of Appeals determined that, even though the parties had entered into an agreement, consumers might be confused when seeing both trademarks, because NP300 and N300 are similar graphically and phonetically, and cover the same goods in Class 12. Further, the court stated that, even though both parties had declared that they would take all necessary measures to avoid any likelihood of confusion, they had not detailed which specific actions would be taken.

Therefore, if the marks were left to coexist on the market, they could cause confusion among consumers. The court thus decided to reject the coexistence agreement filed by Nissan and, consequently, rejected the trademark application for NP300.

Nissan may still file a civil action requesting the annulment of the resolution issued by the Administrative Court of Appeals.

Adriana Barrera, BARLAW - Barrera & Asociados, Lima

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