MEN'S FITNESS held to be invalid
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The Colombian Council of State has held that the trademark MEN'S FITNESS was invalid (August 27 2008).
Mariz Gestao e Investimentos Limitada applied for the registration of the trademark MEN'S FITNESS for goods in Class 25 of the Nice Classification. Colombian company Alpina Productos Alimenticios SA opposed the application on the grounds that the mark applied for was confusingly similar to its earlier registered trademark FINESSE for goods in Class 29. The Colombian Trademark Office declared that the opposition was unfounded and allowed the registration of the mark.
Subsequently, Alpina filed an action for the cancellation of the mark MEN'S FITNESS before the Colombian Council of State. Alpina argued that:
- the FINESSE mark was well known; and
- there was a likelihood of confusion between FINESSE and MEN'S FITNESS, especially in light of the conceptual similarity between the marks.
First, the Council of State considered whether Alpina's FINESSE mark was a well-known trademark under Andean Community Decision 486 on a Common Industrial Property Regime. The council concluded that all the requirements set forth by Decision 486 had been met. In addition, the council highlighted that a notorious trademark deserves particular protection.
The council then assessed the risk of confusion between FINESSE and MEN'S FITNESS, and found that the marks were confusingly similar from a visual, phonetic and conceptual point of view. The council concluded that, should both marks be used concurrently on the market under equal conditions, consumers would be confused as to the origin of the goods.
The council also held that, according to a pre-judicial interpretation issued by the Tribunal of Justice of the Andean Community, a likelihood of confusion is the result of the joint and synchronized impressions created by the marks. In addition, the council recalled that, in assessing the likelihood of confusion between the marks, the similarities - rather than the differences - should be taken into account.
As a consequence, the council held that the trademark MEN'S FITNESS was invalid. This decision is to be welcomed, as it recognizes that consumers perceive trademarks as a whole and do not examine signs in detail. It reinforces the idea that consumers must be provided with adequate tools in order to make informed purchasing decisions.
Fernando Triana, Triana Uribe & Michelsen, Bogota
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