Provisions on famous marks must be interpreted in accordance with Paris Convention

In a decision dated August 12 2014, the Chilean Industrial Property Court of Appeals has confirmed a decision of the Chilean Institute of Industrial Property (INAPI) of June 12 2012, and granted protection to a famous trademark not registered in Chile against an application that did not cover the same goods as those covered by the famous mark. Both the court and the INAPI stated that the text of the Chilean law, which provides that the trademark applied for and the famous trademark must cover identical goods or services for the application to be rejected, should comply with Article 6bis of the Paris Convention and Article 16.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

The case concerned an application for the mixed trademark RIGAL, filed by Comercial Rigal Ltda (Santiago, Chile), for "clothing, footwear and headgear" in Class 25 of the Nice Classification:

The application was opposed by Monarchy Enterprises SARL (Luxembourg), the owner of the trademarks depicted below:

The marks were not registered in Chile, but Monarchy alleged that they were famous in connection with film productions, films formats, video and DVD films and video series.

The opposition was based on:

• the prohibitions set forth in the Chilean Industrial Property Law;
• Articles 6bis and 10bis of the Paris Convention; and
• Article 16.3 of the TRIPS Agreement.

The prohibitions cited by Monarchy were those forbidding the registration as trademarks of signs that:

• may mislead or deceive as to the source, quality or nature of the goods or services, including those covering different but related classes;
• are identical or similar to trademarks that are registered abroad and distinguish the same goods, services or establishments, provided that they are famous and have a reputation among the relevant sector of the public; and
• are the same or are graphically or phonetically similar to trademarks that are already registered or are pending registration, and distinguish the same or similar goods, services or commercial or industrial establishments in the same or related classes, and are liable to create confusion.

Monarchy provided evidence that its R design mark was registered, with or without the word 'regency', in its name in Class 9 in the WIPO International Register, as well as in the United States, South Africa and other countries.

At first instance, the INAPI rejected the ground of opposition that the trademark applied for was identical or similar to an earlier registered trademark, stating that such ground applies only to signs protected by registration in Chile and noting that Monarchy's sign was not registered in the country.

However, the INAPI accepted the ground of opposition that the opponent's trademark was famous and notorious. This part of the decision went beyond the requirements of the Chilean law, which forbids the registration of signs identical or similar to famous trademarks in Chile only when the mark applied for covers the same goods as those covered by the famous mark, which was not the case here.

The decision considered that Article 6bis of the Paris Convention is directly applicable in Chile in spite of the wording of the local law. In other words, it must be interpreted that the INAPI considered that the Chilean prohibition is complemented by the Paris Convention, without the need for an additional provision in the national law.

Further, the decision also referred to Article 16.3 of the TRIPS Agreement, which states that Article 6bis of the Paris Convention applies to non-similar goods or services provided that use of the famous trademark by a third party would indicate a connection or link between those goods or services and the owner of the registered trademark, and provided that the interests of the owner of the registered trademark are likely to be damaged by such use. Therefore, it appears that the opposition was also upheld based on the fact that, if accepted, the trademark applied for could mislead or deceive as to the source, quality or nature of the goods.

At second instance, the Industrial Property Court of Appeals confirmed the first instance decision, stressing that the opponent's trademark was famous and, therefore, registration of the mark applied for would go against the prohibitions set forth in the Chilean law in this respect, as well as against Article 6bis of the Paris Convention. Further, the court expressly stated that the fame of the trademark on which the opposition was based went beyond the premise of trademark specialty.

No recourse against the second instance decision has been filed before the Supreme Court, so the decision is now final.

Sergio Amenábar, Estudio Villaseca, Santiago