Identical trademarks in the same international class can coexist

Two decisions issued by the Colombian Trademark Office seem to indicate that it is now prepared to allow registration and coexistence of identical marks in the same class of the Nice Classification. In one case, the Trademark Office allowed registration of two FINISH marks in Class 1, and in the other, it allowed registration of two SWIFT marks in Class 16.

In both cases, the Trademark Office acknowledged that identical marks will not cause confusion if they are for products that:

• are dissimilar in use or nature;
  
  
• have differing consumer or commercial targets; or
  
  
• have alternative means of distribution.

In Rhone Poulenc v Reckitt Benckiser (Resolution 12269), multinational manufacturer of cleaning products Reckitt Benckiser applied to the Trademark Office for registration of FINISH in Class 1 of the Nice Classification for, among other things, "bleaching preparations and other substances for laundry use and dishwashing". At first instance and at the reconsideration stage, the Trademark Office refused registration on the grounds that Rhone Poulenc, a multinational that now forms part of the Aventis group, had previously registered an identical FINISH mark in the same class (albeit exclusively for "agricultural, horticultural and forestry chemical products, fertilizers for the soil, and growing regulators". The Trademark Office held that since the marks are identical and fall within the same registration class they could not coexist without creating confusion among the public.

On appeal, the Trademark Office overturned its earlier decisions and allowed Reckitt Benckiser's mark to proceed to registration. It held that although the marks fall within the same class of the Nice Classification, the goods covered differ sufficiently to allow the marks to coexist without causing confusion.

In the other case (Resolution 41.835), Society for Worldwide Interbank Financial Telecommunication SCRL applied to register the mark SWIFT in Class 16 for goods to be used in the fields of finance and telecommunications. At first instance, the Trademark Office refused the application based on the prior registration of an identical mark in the same class. However, on reconsideration, it held that even though the trademarks are identical, it is unlikely that the public would confuse the goods covered by the two marks due to their differing nature and means of distribution. Thus, the two marks will be allowed to coexist.

Juanita Acosta Gómez, Cárdenas & Cárdenas, Bogota