REEF application hits the rocks

In South Cone Inc v Fernández (Case 606,051), the Chilean Trademark Office (TO) has upheld an opposition to the registration of the trademark REEF.

Mauricio César Díaz Fernández filed an application to register REEF for goods in Class 12 of the Nice Classification and, in particular, bicycles and bicycle parts and accessories. South Cone Inc, a surf wear company established in California, opposed the application based on several REEF registrations in various countries and classes, including a number of Chilean registrations in Class 25. It also provided evidence that its mark was well known.

The TO upheld the opposition and refused to allow registration. It held that the mark was confusingly similar to South Cone’s REEF mark, even though South Cone’s mark was not registered for goods in Class 12 in Chile, and applied to other types of sports equipment and not bicycles.

Despite holding that South Cone’s REEF mark was well known, the TO dismissed its argument that Fernández had submitted his application in bad faith. This finding is perhaps a little odd since the TO usually accepts that an application has been made in bad faith where it is confusingly similar to a well-known mark.

Felipe Claro Swinburn, Claro y Cia, Santiago