DELL mark held to be notorious

The Colombian Trademark Office, in deciding on the registrability of the trademark DELL for furniture in Class 20 of the Nice Classification on behalf of an unauthorised third party, has declared that the trademark DELL, property of US corporation Dell Inc, was notorious. The Trademark Office recognised that the mark was highly distinctive in the Colombian market for computer and technology products.

Dell sought to obtain a declaration of notoriety of its DELL mark within the context of opposition proceedings against an application by a Panamanian company to register an identical mark in Class 20. To support its claim, Dell filed evidence regarding the sale and advertising of products sold under the DELL mark, in order to demonstrate the public's awareness of the DELL-branded products within the relevant markets in the Colombian territory.

After evaluating the evidence provided by Dell, the Trademark Office found that the company produces and commercialises a very high volume of computer and technology products under the trademark DELL, and invests a significant amount of its revenue to advertise its products.

The Trademark Office concluded that Dell's products are widely known among Colombian consumers. The office also noted that:

• the presence of the DELL mark in several publications - whether general or specialised - demonstrated the significance of the mark in connection with computer products; and
• market studies showed that the DELL mark is the fourth most recognised mark on a national level.

All these findings were definite indicators of the positioning and reputation of the trademark DELL in connection with computer and technology products.

Another important aspect of the decision is that, although the goods for which the DELL mark was considered notorious fall within Class 9, the protection granted to the mark was extended to furniture in Class 20 (which the application at issue sought to cover). The office carried out a detailed analysis of the habits of consumers of both types of products, instead of following the usual interpretation of the applicable law; it concluded that, even though technology products and furniture do not have an intrinsic and direct relationship, consumers make a complementary use of these products. Trademarks that are considered to be notorious must benefit from extended protection to avoid a risk of confusion in the market.

Fernando Triana and Grace Sutachan, Triana Uribe & Michelsen, Bogota