Decision shows lack of clarity concerning registration of slogans
According to the Chilean jurisprudence, slogans may be registered if:
- they are attached to a trademark for products and services; and
- considered as a whole, they have fanciful character.
However, the jurisprudence does not provide clear guidelines with regard to the concept of 'fanciful character'. Certain opinions have associated the concept of 'fanciful character' to that of 'novelty' in the sense that, in order to be registered, a slogan must not have been commonly used in the industry for the associated goods or services. However, according to a more demanding criterion, a slogan must be new and not obvious in relation to the relevant products and services - that is, in order to be registered, a slogan must require a mental process on the part of the public.
On November 5 2013 this duplicity was shown in a decision issued in an administrative action for the cancellation of the slogan "Dettol, 10 veces más protección que los jabones comunes” ("Dettol, 10 times more protection than common soaps"), registered under No 842643 by Reckitt & Coleman (Overseas) Ltd.
The action for cancellation was based on the following arguments:
- The trademark DETTOL, 10 VECES MÁS PROTECCIÓN QUE LOS JABONES COMUNES, as a whole, was not fanciful, as it directly indicated the quality of the goods to be advertised;
- Consequently, the registration restricted the right to free competition and affected the ability of others to promote their goods; and
- A clear evidence of the lack of fanciful character of the slogan was the fact that the complainant used a similar non-registered phrase to promote its products.
Reckitt's main arguments were as follows:
- The degree of fantasy and novelty required for the registration of slogans is not as high as that required for the registration of trademarks for products and services.
- Its slogan, considered as a whole, was not descriptive or indicative. In fact, it was the first company to have conceived and used such a slogan.
- It was the sole user of the exact phrase at issue.
At first instance, the Chilean Institute of Industrial Property rejected the complaint on the following grounds:
- The slogan at issue fulfilled the requirements of novelty, characterisation and visibility necessary to be registered as a slogan trademark, notwithstanding the fact that some elements of the slogan could be considered to be non-distinctive; and
- There was no evidence that the slogan jeopardised free competition and commercial goods practices.
The decision was appealed to the Special Court of Appeals. The decision was confirmed by the appellate court, but a very interesting dissenting opinion held as follows:
- Although slogans usually contain descriptive or indicative words in connection with the quality of the products that they intend to promote, they must have, when considered as a whole, a minimum of fantasy, originality and distinctive character to differentiate them from those of competitors, in order to prevent the restriction of free competition.
- The slogan that was the object of the complaint was not original and did not require any kind of intellectual process on the part of consumers. The slogan consisted of commonly used elements and was not distinctive as a whole.
- The quality of the product mentioned in the slogan (ie, "10 times more protection") was not demonstrated by Reckitt.
The dissenting opinion went beyond previous decisions issued in similar matters in that it explicitly referred to the economic effects of the registration of slogans that do not possess the necessary originality and novelty.
The dissenting opinion may serve as a reference as to how free competition and intellectual property may interplay in order to avoid prejudice to free competition, which is of public interest. In this respect, it goes further than the Supreme Court decision in the BANCO DE CHILE case, which was issued earlier this year.
Sergio Amenábar, Estudio Villaseca, Santiago
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