Song festivals allowed to coexist on register

The Chilean Trademark Office (TO) has allowed the marks FESTIVAL INTERNACIONAL DE LA CANCION (meaning 'International Song Festival') and FESTIVAL INTERNACIONAL DE LA CANCION DE LA SERENA (meaning 'La Serena International Song Festival') to coexist for similar services (Decision 130826, October 8 2004).

The City of La Serena, a popular holiday location in Chile, applied to register FESTIVAL INTERNACIONAL DE LA CANCION DE LA SERENA as a trademark in relation to a music festival. The City of Viña del Mar opposed the application based on its registered mark FESTIVAL INTERNACIONAL DE LA CANCION. Viña del Mar has organized a six-day annual music festival under the name Festival Internacional de la Canción for over 30 years. While the event began as a local music contest, the festival has since become a well-known gathering of popular artists, who are invited as guests to the contest. The mark FESTIVAL INTERNACIONAL DE LA CANCION is therefore considered well known in Chile, despite being made up of common words.

The TO dismissed the opposition. It held that even though the marks have a number of elements in common, the name La Serena added sufficient distinctiveness to the junior mark to differentiate it from the senior mark so as to avoid confusion.

Viña del Mar has filed an appeal.

Luis Felipe Claro Swinburn and Noëlle Jeanneret, Claro y Cia, Santiago