Infringing design mark used on religious clothing invalidated

In Scognamiglio Clá Dias v La Sociedade Brasileira de Defensa da Tradicion, Familia y Propiedade (Case 02-194 RVM), a committee of the Ecuadorian Institute of Intellectual Property (IEPI) has invalidated a registration for the design mark DISEÑO DE TRAJE DE GALA (meaning 'formal suit design') used on religious ceremonial clothing. It held that the use of a particular image in the mark infringed various rights in artwork created and registered by the plaintiff.

La Sociedade Brasileira de Defensa da Tradicion, Familia y Propiedade registered the mark on April 9 2002. João Scognamiglio Clá Dias, a Brazilian individual who produces religious artwork and designs, filed an action requesting invalidation of the registration on the grounds that the mark included some of his artwork without authorization. His claim was based on Article 136(f) of Andean Community Decision 486 on a Common Intellectual Property Regime, which establishes that trademark registration may not be granted to marks that violate the industrial property rights or copyright of a third party, unless the consent of that party has been obtained.

Scognamiglio produced evidence of design and trademark registrations in Brazil and Peru for the artwork included in Sociedade Brasileira's mark. He also (i) demonstrated that the Brazilian administrative authorities had granted well-known status to the marks he had registered in that country, and (ii) provided affidavits by officers of accredited charitable and religious organizations that use his designs.

The IEPI committee upheld Scognamiglio's claim under Article 136(f) of Decision 486. It also examined Article 136(h), which prohibits registration of signs that constitute a reproduction, imitation, translation or transliteration of a well-known mark where such signs are likely to cause a risk of confusion or association with that mark, unfair exploitation of its prestige, or the dilution of its distinctive force or commercial or marketing value. In light of the evidence produced by Scognamiglio, the committee held that his trademarks were entitled to the protection afforded to marks of very high renown. Accordingly, the committee invalidated Sociedade Brasileira's mark.

Amani S Harrison, Bustamante & Bustamante, Quito