District court rules in ORIENTAL case on remand from First Circuit

Puerto Rico

Trademark infringement is predicated on likelihood of confusion. In Oriental Financial Group Inc v Cooperativa de Ahorro y Credito Oriental (No 3:10-CV-1444 JAF, 2014 WL 5844166, at *2 (DPR), November 12 2014), on remand from the First Circuit, the District Court for the District of Puerto Rico has determined that the mark COOP ORIENTAL did not infringe the ORIENTAL mark, even though both marks are directed at financial services. In particular, the court found that:

  • the marks were not sufficiently similar;
  • there was no actual confusion; and
  • the defendant did not intend to infringe Oriental Financial Group Inc’s trademark.

The opinion and order, written on remand by District Judge José A Fusté, highlighted that the term 'coop' created a “highly recognisable difference” serving as an “identifier signifying its designation as a credit union”. The court reasoned that the term 'coop' or 'cooperativa' is a legally mandated term to be added to cooperatives organised under Puerto Rico law, therefore distinguishing the defendant’s services from those of Oriental, a “full-service commercial bank”. The court also found that there was no evidence of actual confusion, even though the two financial institutions had operated for over 10 years. Thus, the court noted that the absence of actual confusion weighed in favour of non-infringement.

Finally, the court determined that the term 'oriental' simply means 'eastern' in Spanish. The court explained that the term 'oriental' is quite common on the eastern portion of Puerto Rico, where the defendant operated. The court cited other businesses with the word 'oriental' in their name (ie, Oriental Maintenance, Oriental Realty, Oriental Taxi, Corporación Médica Oriental and Oriental Medical Group) and found that the defendant had not “engaged in bad faith when it chose to use the trade names Coop Oriental and Cooperativa Oriental".

In sum, the opinion shows that geographical features in trademarks may be used to show lack of intent of infringement sufficient to overcome a claim of infringement. The opinion also shows that legally mandated terms such as 'coop' or 'cooperativa' may serve to create distinctions in otherwise identical marks.

José Alejandro Medina Cruz, Ferraiuoli LLC, Puerto Rico

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