General interest prevails over private agreement, registrar affirms

The Venezuelan Trademark Office (TO) has refused to register the mark ZENIT, finding that a coexistence agreement between the applicant and the owner of the prior registered mark ZENITH would not eliminate the likelihood of confusion. The registration would thus be contrary to the general public's interest (Venezuelan Industrial Property Bulletin, 1870, February 13 2004).

Zvern Krasnogorsky Zavod (ZKZ), a Russian company, applied to register the mark ZENIT for a wide range of goods in Class 9 of the Nice Classification. The TO refused the application on the basis of Zenith Electronics Corporation's prior registered ZENITH marks. ZKZ appealed, arguing that (i) it had reached coexistence agreements with Zenith Electronics in other countries such as Mexico, and (ii) it had already applied the terms of these agreements to its Venezuelan operations. ZKZ requested that the TO allow the registration while it tried to reach a coexistence agreement with Zenith Electronics for Venezuela.

The TO upheld its previous decision. It affirmed its finding that ZENIT and ZENITH are confusingly similar. It also held that it would be contrary to the general public's interest to allow confusingly similar trademarks to coexist. Reminding ZKZ that the goal of the Industrial Property Law is to protect the interest of the general public, not individual parties, it held that a decision to refuse a trademark application cannot be affected by private agreements such as coexistence agreements.

Ricardo Fischer, Hoet Pelaez Castillo & Duque, Caracas