JUAN VALDEZ is recognized as famous trademark

The head of the Division of Distinctive Signs of the Superintendence of Industry and Commerce has issued two decisions of great importance for the National Federation of Coffee Growers of Colombia (Resolutions 28644 and 28645, September 7 2007).

Resolution 28644 rejected the application filed by Adriana Granados for the registration of the trademark JUAN CAFÉ (and design) for services in Class 43 of the Nice Classification. The head of the Division of Distinctive Signs upheld the opposition filed by the National Federation of Coffee Growers.

In light of the evidence filed, the head of the Division of Distinctive Signs acknowledged that JUAN VALDEZ is a well-known trademark in Colombia in connection with the coffee industry for the period between 2000 and 2006. It ruled that the trademark is well positioned in the market, has prestige and a good reputation. Accordingly, the trademark:

• is highly distinctive;
  
  
• clearly identifies its commercial origin; and
  
  
• differentiates the National Federation of Coffee Growers' products from those of other producers.

Moreover, the head of the Division of Distinctive Signs found that the owner of the trademark consistently exploits, promotes, protects and develops it. Therefore, the trademark is likely to continue to be well known in relation to coffee, both at national and international level.

In Resolution 28645 the head of the Division of Distinctive Signs rejected the application filed by Agroindustria Del Oriente for the registration of the trademark HACIENDA JUANA VALDEZ (and design) for services in Class 43. It upheld the opposition filed by the National Federation of Coffee Growers and found that the Juan Valdez character deserves legal protection.

Juan Valdez is a fictional character created by the National Federation of Coffee Growers. Juan Valdez, a coffee grower often seen with a mule, is widely known and associated with coffee, its tradition and culture. Consequently, the head of the Division of Distinctive Signs considered that the registration of the trademark HACIENDA JUANA VALDEZ could potentially damage the identity, prestige and image of the character Juan Valdez, as well as the National Federation of Coffee Growers' commercial activity.

JUAN VALDEZ, one of the most valued trademarks in the country, is now recognized as a well-known trademark. Moreover, the Juan Valdez character is recognized as deserving legal protection. Consequently, the Superintendence of Industry and Commerce must now prevent the registration of trademarks which are identical and/or similar to the trademark JUAN VALDEZ, without taking into account the goods or services covered.

Fernando Triana, Triana Uribe & Michelsen, Bogota