EBEL PARIS unfair as products are not from France

In Fédération des Industries de la Parfumerie v Ebel International (2607-2005/OSD-INDECOPI, February 25 2005), the Trademark Office of Peru (TO) has upheld an opposition to the registration of EBEL PARIS.

Ebel International, a company that markets its products throughout Latin America, applied to register EBEL PARIS and design for goods in Class 3 of the Nice Classification. The application was opposed both by (i) the Fédération des Industries de la Parfumerie (FIPAR), an organization that oversees the common interests of a number of French perfume and cosmetics manufacturers, and (ii) Peruvian cosmetics company UNIQUE SA.

FIPAR argued that the mark included the name Paris, thereby misleading consumers with respect to the origin of the products. It also stated that Paris is the capital of France, a country famous for the quality of its perfumes and cosmetics, and that Ebel had included PARIS in its mark with the intention of taking advantage of the reputation of French perfumes and cosmetics.

UNIQUE, on the other hand, argued that the use of PARIS within the mark constituted an act of unfair competition because the products distinguished did not come from Paris or indeed France, but were manufactured in Peru and Colombia. UNIQUE also stated that it was highly unlikely that Ebel owned a registration for the mark EBEL in Class 3 in France given the fact that EBEL is the well-known mark of a third-party watch manufacturer based in Switzerland. UNIQUE also alleged that Ebel did not clearly indicate on its products that they were manufactured in Peru or Colombia and presented them as if they were of French origin by use of:

• the name Paris on the products and on its website;
  
  
• the phrase 'product made in France' in French on some products; and
  
  
• a design of the Eiffel tower.

UNIQUE concluded that the mark should be denied registration pursuant to Articles 135 (subsections (i) and (l)), 137, 221 and 222, of Andean Community Decision 486 on a Common Industrial Property Regime.

The TO dismissed UNIQUE's claims that the sign was a deceptive and misleading mark within the terms of Article 135(i) and (l) since the registrabilty of a mark is independent from its use on the market. The TO pointed to a number of other third-party marks registered in Class 3 that include the word PARIS, such as CALLIDERM PARIS, ALMACENES PARIS, MAXIM'S DE PARIS and SOIR DE PARIS.

However, the TO did uphold the unfair competition claim under Article 137, which states:

"The competent national office may, when it has sufficient reason to believe that the registration was applied for in order to engage in, contribute to, or strengthen an act of unfair competition, ... refuse to register such trademark."

According to the TO, Ebel's conduct was unfair not only because it was using the word PARIS on its products and distinctive signs, and in its advertising, but also because it was using that word and other references to imply that its products were of French origin, without informing consumers of their real origin (ie, Peru and Colombia). The TO also noted that the products were mainly being sold through direct selling by means of catalogues, which also contained several references suggesting that the products were of French origin. This would mislead consumers into thinking that the products were made in France.

Accordingly, the TO upheld the opposition and refused to allow registration.

Gonzalo Ferrero, Ferrero Lema Solari & Asociados, Lima