Protected designations of origin can be registered as trademarks

In December 2012 the Chilean Supreme Court accepted a cassation recourse (No 4073-2012) filed by Consorzio per la Tutela del Formaggio Grana Padano, and allowed the registration of the trademark GRANA PADANO D.O.P. (and design) for “cheese” in Class 29 of the Nice Classification.

The application for GRANA PADANO D.O.P. had been rejected at the first instance by the National Institute of Industrial Property (INAPI), which stated that the mark was descriptive and lacked distinctiveness. Therefore, it was not registrable as a trademark.

On appeal by the applicant, the decision of the INAPI was confirmed at the second instance by the Appeal Court of Industrial Property. However, although it upheld the INAPI's decision, the court based its own decision on different grounds - that is, the alleged existence of circumstances that may mislead consumers as to the origin or attributes of the goods, as the mark is actually a protected designation of origin. It is important to point out that geographical indications and designations of origin must be registered as such with the INAPI to obtain protection under the Industrial Property Law of Chile.

Additionally, in the decision, a dissenting judge considered that the applicant had been deprived of the freedom to choose how to protect its distinctive sign under one of the ways available under Chilean law. This means that, according to the dissenting judge, the applicant could register the sign as a distinctive trademark, even though it was a registered as a protected designation of origin abroad.

In the cassation recourse before the Supreme Court, the applicant alleged that the lower court had violated the law because the grounds on which its decision was based (ie, the mark would mislead consumers as to the qualities and origin of the goods) had not been set forth at the first instance. On the merits, the applicant argued that, because it owned the corresponding designation of origin and a registration for the mark at issue in its country of origin (Italy), it could choose which industrial property right it wished to apply for in Chile.

The Supreme Court upheld the cassation recourse based on the procedural aspects, but also held that the trademark at issue included graphic elements, in addition to the protected designation of origin 'Grana Padano D.O.P.', which allowed it to be differentiated in the market. However, the court pointed out that attention must be paid to the following points:

• If a designation of origin recognised in one country can be registered as a trademark in another country, this means that the registration of foreign designations of origin is allowed under that country's legislation; and
• The regulation of this kind of industrial property right is contained in widely accepted multilateral agreements, such as the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights.

Sergio Amenábar and Álvaro Arévalo, Estudio Villaseca, Santiago