Food standards body and trademarks office linked by new regulation

The Instituto Nacional de Alimentación y Nutrición (the National Institute of Food and Nutrition) (INAN), a public entity responsible for granting sanitary registration certificates to manufacturers of food and beverage products enabling them to be commercialized in Paraguay, has enacted a regulation which establishes that all names of food and beverage products intended to be commercialized in Paraguay must have been registered as trademarks before the manufacturer can request a sanitary registration certificate for the product.

The regulation has forged a link between INAN and the Intellectual Property Office (IPO), which was recently tested in a conflict between the sign 'Bimbi' and the mark BIMBO, both of which fall under the same class of the Nice Classification (bread in Class 30).

Although the 'Bimbi' sign was not registered as a trademark, the related product had been granted a sanitary registration certificate by INAN meaning that there was no impediment preventing the manufacture and sale of bread bearing the name Bimbi. Grupo Bimbo took issue with this, stating that the production and sale of bread under the Bimbi name amounted to unfair competition with its bread sold under the mark BIMBO. Therefore, Grupo Bimbo filed a claim with INAN requesting the immediate cancellation of the sanitary registration certificate issued to the manufacturer of Bimbi products. Grupo Bimbo argued that, in contravention of the law, Bimbi did not have a registered trademark or pending registration at the time the certificate was granted.

Further, Grupo Bimbo stated that the production and sale of Bimbi products without a corresponding trademark registration was causing confusion and dilution in the marketplace because of the similarity of the Bimbi name with the well-known and highly reputed BIMBO mark.

The IPO issued an opinion on the matter, explaining that it had refused to register the name Bimbi as a trademark on the grounds that it was similar to the trademark BIMBO. Grupo Bimbo used this opinion as one of the main pillars to support its claim for cancellation of the Bimbi sanitary registration certificate.

INAN accepted Grupo Bimbo's claim but because it is a dependent entity of the Ministry of Health, an administrative trial before the ministry was required. A ministerial judgment from this trial is still pending, but considering the facts and INAN's new regulation, the outcome is most likely to be in favour of the owner of the registered BIMBO mark, which has complied with every aspect of Paraguayan legislation.

María Antonia Gwynn, Berkemeyer Attorneys & Counselors, Paraguay