Reasonable indications of bad faith invalidate registration

In Kimberly-Clark Worldwide Inc v Escardo Cuglievan (Case 14212-2003/OSD-INDECOPI), the Peruvian Trademark Office (TO) has declared the mark GRANITO null and void. It found that reasonable indications that the mark had been registered in bad faith were sufficient grounds for invalidation.

Kimberly-Clark Worldwide Inc - the US manufacturer of hygiene products such as KLEENEX tissues and HUGGIES nappies - filed an invalidation action against Teresa Francie Escardo Cuglievan, the registrant of the mark GRANITO, on the grounds that the mark was descriptive and had been registered in bad faith. In particular, Kimberly-Clark alleged that:

• Escardo Cuglievan's husband - Max Gorbitz - was the principal partner and legal representative of Sunset SA and MG Graphics, two companies that imitated and copied the marks and colours of Kimberly-Clark's products;
  
  
• after he had received a cease and desist letter from Kimberly-Clark demanding that his companies stop imitating Kimberly-Clark's trademarks, Gorbitz had used his wife to try to register the marks GRANITO, TERRAZA and SAHARA, which Colombiana Kimberly Colpapel SA had used in Peru since 1992 to describe the colours of several Kimberly-Clark toilet papers; and
  
  
• Escardo Cuglievan was in the same line of activity as Kimberly-Clark, and therefore should have known about the existence of Kimberly-Clark's marks.

The TO rejected Kimberly-Clark's first contention, finding that the term 'granito' (meaning 'granite') was not descriptive of any of the characteristics or qualities of the products in Class 16 of the Nice Classification for which the mark was registered.

However, the TO upheld the claim that the mark had been registered in bad faith. It found that Kimberly-Clark's allegations were reasonable indications (as stipulated in Article 137 of Andean Community Decision 486 on a Common Intellectual Property Regime) that the registration was applied for to contribute to an act of unfair competition. Accordingly, it declared the registration null and void pursuant to Article 172 of Decision 486.

Gonzalo Ferrero, Ferrero Diez Canseco & Asociados, Lima