Phonetic similarity with descriptive term precludes MAIZENA registration

The Administrative Court has upheld a decision of the Trademark Office (TO) to refuse registration of the mark MAIZENA. Among other grounds for refusal, both the TO and the court found that the mark was phonetically similar to maicena (meaning 'fine corn flour'), which is descriptive of some of the products for which registration was sought (Case 0134-2004/TPI-INDECOPI).

In July 2003 Conopco Inc filed an application to register the mark MAIZENA for drinks made of cereals in Class 32 of the Nice Classification.

The TO refused the application. It found that, although the term 'maizena' is not recognized as such in Spanish dictionaries, it is phonetically similar to the word 'maicena', which means 'fine corn flour'. Consequently, the mark MAIZENA would be perceived by the general public as the word 'maicena' and, thus, as an ingredient used in the manufacture of certain foodstuffs. Fine corn flour, the TO held, is descriptive of some of the products in relation to which the application was sought, which renders the mark MAIZENA incapable of distinguishing Conopco's products. Allowing registration would affect the interests and legitimate rights that competitors have to use the term 'maicena' for the identification and promotion of products in Class 32.

In upholding the decision, the Administrative Court added that, pursuant to Article 135(e) of the Andean Community Decision 486 on a Common Intellectual Property Regime, signs may not be registered as trademarks when they consist solely of a sign that may serve in commerce to designate or describe, among other things, the quality, quantity, purpose, value, geographical origin or characteristics of the goods or services for which they will be used.

The court also rejected Conopco's argument that the mark MAIZENA was evocative. The court indicated that while a descriptive term directly informs consumers about a characteristic of a product or service, an evocative term refers indirectly to an aspect related to it: it suggests characteristics or qualities, but requires that the consumer use his or her imagination to associate the mark with the product or service.

Lastly, the court found that the mark lacked distinctiveness and, thus, should be refused registration pursuant to Article 135(b) of Decision 486.

Gonzalo Ferrero, Ferrero Diez Canseco & Asociados, Lima