Edenred's ownership of CESTATICKET mark compromised by new law
On October 23 2015 a new law - a presidential decree with the force of law - came into effect in Venezuela. Although, in theory, it had nothing to do with trademark law, the new law set an ominous precedent for the trademark system in Venezuela (probably due to a mistake or oversight on the part of those who drafted it) by using a registered trademark as a generic term, thereby forcing all the competitors of the trademark owner to use that mark.
The new law, called the "Law on Socialist Cestatickets for Workers", uses the trademark CESTATICKET without any explanations or even recognition of the rights of Edenred, the French company that owns the trademark in Venezuela.
The law aims to regulate "socialist Cestatickets" as a food benefit that will "protect and defend the food purchasing capacity of workers", and is related to the access to food coupons, tickets and electronic cards, which are used by workers worldwide.
The law creates the impression that the mark CESTATICKET is a generic term to identify all types of coupons, tickets and electronic cards, as if there were only one supplier of such products in Venezuela, or the expression had been vulgarised and was thus free of use. Consequently, it appears to give any supplier of such goods the right to identify its coupons or food tickets by the term 'Cestaticket'.
However, none of these assumptions are correct:
- There are several companies offering products that compete with 'Cestatickets'.
- To the best of the author's knowledge, there has been no proceedings before the Venezuelan courts or the Trademark Office ruling that the registered trademark CESTATICKET had become a generic term and was thus free of use.
The legislature's intention of treating the CESTATICKET mark as a generic term is confirmed in Article 11 of the decree-law, which establishes the obligation for all providers of grocery coupons, electronic or not, to identify them by the term "Socialist Cestaticket".
Arguably, this is the result of a serious oversight on the part of the drafters of the law. Given the damage that it is causing to the rightful owner of the trademark, it is assumed that Edenred must be considering the necessary steps to correct this situation, or at least get a monetary compensation from the government, under the assumption that an expropriation of the mark will be decreed.
It is hoped that this was only the result of severe negligence on the part of the authorities, and that the latter will take measures to correct this mistake and avoid further harm to Edenred's IP rights and the international conventions recognised in Venezuela.
Ricardo Alberto Antequera H, Estudio Antequera Parilli & Rodríguez, Caracas
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