Santiago Convention requirements cannot be satisfied, says TTAB

United States of America
In Franpovi SA v Wessin (Opposition 91181129, February 9 2009), a case of first impression, the Trademark Trial and Appeal Board (TTAB) has rejected Franpovi SA’s bid to prevent the registration of the mark POLLOS VICTORINA for “fast-food restaurants” in the United States under the Convention for the Protection of Commercial, Industrial and Agricultural Trademarks and Commercial Names (the Santiago Convention).

The Santiago Convention, which was signed by the United States in 1923, provides a trademark owner domiciled in a member country with the right to prevent the registration of its mark by an applicant in another member country. Most member countries to the Santiago Convention later joined the General Inter-American Convention for Trademark and Commercial Protection (the Pan-American Convention), which superseded the Santiago Convention as between countries that are members to both treaties. However, while the United States is a member to the Pan-American Convention, the Dominican Republic is not. 

Franpovi holds rights to the mark POLLOS VICTORINA in the Dominican Republic. Rosalinda Wessin and Daniel Pena sought to register the mark in the United States. They admitted that:
  • they had not used the mark at issue in the United States or elsewhere; and
  • they were aware of Franpovi’s rights to that mark in the Dominican Republic. 
Franpovi sought to oppose registration of the mark under the Santiago Convention because the protections afforded by the Pan-American Convention are not available to a Dominican company. 

The TTAB noted that to avail itself of the opposition procedures provided by the Santiago Convention, an opponent must comply with the formal requirements set forth for trademark protection, including those described in Section 1:

"The high contracting parties agree that any commercial, industrial or agricultural trademark registered or deposited in any of the states signatory of the convention by a person domiciled in any of such states […] may obtain in the other signatory states the same protection granted by them to the marks registered or deposited in their own territory, […] provided that the formalities and conditions required by the domestic laws of each state, as well as the following requirements, are complied with:

a) Any person interested in the registration or deposit of the mark shall present to the proper Inter-American Bureau through the proper office of the state of first registration or deposit, an application for recognition of the rights claimed, in accordance with the requirements prescribed in the appendix of this convention, which is declared to be a part hereof.

b) He shall pay […] a fee equivalent in value to $50.00 US gold. [...] Such fee shall be used to cover the expenses of the said Inter-American Bureau."

Therefore, prior to mounting an opposition to the registration of a trademark pursuant to the Santiago Convention, the owner must have applied for protection to one of the Inter-American Bureaus. Franpovi could not satisfy this requirement because the last operational bureau in Havana, Cuba, shut down in 1949. A second bureau planned for Brazil was never opened.

The TTAB noted that the Inter-American Bureaus contemplated by the Santiago Convention would serve several important functions, including the recording of applications received through national registration offices. This notification function would ensure that nationals of member states would have access to trademark registrations in each member state. Therefore, rights in all member states could not be obtained simply through registration in the applicant’s home country. The TTAB also noted that the Pan-American Convention provided additional safeguards against the same problem.

The TTAB thus denied Franpovi’s motion for summary judgment because there are no functioning Inter-American Bureaus and, consequently, a trademark owner cannot satisfy the application requirements set forth in the Santiago Convention. Although not addressed in this decision, Franpovi also opposed the application under the 'foreign famous mark' doctrine - namely, it claimed that its mark, although not used in the United States, is famous in that country by virtue of its use elsewhere. 

Howard Shire and Brett Watkins, Kenyon & Kenyon LLP, Washington

Unlock unlimited access to all WTR content