Landmark decision on test for similarity issued

The Colombian Council of State has issued a landmark decision clarifying the test for assessing similarity of marks that cover identical goods. It held that a difference between the marks in at least one of the three criteria contemplated by Andean Community Decision 486 on a Common Industrial Property Regime to assess similarity - namely, phonetic, visual or conceptual aspects - may be sufficient to find that the marks are not confusingly similar (Decision 05646-01, July 27 2006).

The decision stems from an application filed in 1996 by Fiat Auto SpA to register the mark SIENA in Class 12 of the Nice Classification. The Colombian Trademark Office rejected the application on the basis of the prior registration by Ayrton Senna Promoçoes e Empreendimientos Ltda of the mark S SENNA in the same class. The office found the marks to be confusingly similar.

All of Fiat's three appeals failed. Subsequently, it filed a nullity action against the Trademark Office's decision before the Council of State.

The Council of State upheld Fiat's action. It held that even though there were phonetic and visual similarities between the marks, they were conceptually different: SIENA evokes a city located in Tuscany, Italy, where Fiat is domiciled and enjoys a reputation, while S SENNA derives from the name of the famous Brazilian Formula 1 driver Ayrton Senna. This difference, the council reasoned, was enough to reject any likelihood of confusion between the marks. Accordingly, the council annulled the three resolutions issued by the Trademark Office and ordered it to allow registration of the mark SIENA.

Fernando Triana, Triana Uribe & Michelsen, Bogota