Phrase with double meaning is still descriptive

The Superior Colombian Administrative Court's Council of State has refused registration of the phrase 'La Gran Ola' as a mark for granola (a type of muesli made up of cereals and dried fruits) snack bars (Case 01-6761). It held that the phrase was descriptive, in spite of the fact that the Spanish expression 'La Gran Ola' also means 'the big wave'.

Compañia Nacional de Chocolates (CNC), a Colombian confectionary manufacturer, applied to register the phrase 'La Gran Ola' and a wave-shaped design as a trademark for products in Class 30 of the Nice Classification and, in particular, granola cereal bars.

The Colombian Trademark Office (TO) allowed the registration and dismissed an opposition action by Kellogg Company. The TO rejected Kellogg's claim that the proposed registration was generic, holding that since the phrase 'La Gran Ola' has an alternative meaning (ie, 'the big wave'), it had sufficient distinctive character. Kellogg appealed and the Andean Tribunal of Justice overturned the TO's decision.

The Superior Colombian Administrative Court's Council of State dismissed CNC's appeal and upheld the Tribunal of Justice's decision. It held that the proposed registration was descriptive of the goods to which it relates, namely granola cereal bars. It reasoned that, when faced with the phrase 'La Gran Ola' on a cereal bar, consumers would automatically believe that it referred to granola and not to a big wave. Thus, the fact that the phrase has an alternative meaning did not make it distinctive.

Juanita Acosta Gómez, Cárdenas & Cárdenas, Bogota