Supreme Court considers registrability of descriptive terms


The Venezuelan Supreme Court has dismissed an action filed on March 1 2006 by CDS TELECOM CA against Compañía Anónima Nacional Teléfonos de Venezuela (CANTV) in relation to the alleged infringement of CDS' rights in the trademark LISTO (which may be translated into English as 'ready'), registered in Classes 16 and 38 of the Nice Classification.

During the period from 2003 to 2005, CANTV broadcast an advertising campaign through various media to promote its wireless telephone service under the name CANTV LISTO.

CDS considered that its rights in the LISTO mark had been infringed, arguing that there were graphic, visual, phonetic and conceptual similarities between its LISTO mark and the name CANTV LISTO. According to CDS, since CANTV was using the term 'listo' without agreement or consent from CDS, CANTV was carrying out a wrongful act which resulted in an obligation to compensate the damage caused.

In response, CANTV declared that the term 'listo' was not used as a trademark but as a generic adjective. Additionally, it claimed that:

  • the term was used only for the purpose of providing information about its products/services in a descriptive and informational manner; and
  • even though it was registered as a trademark, the term 'listo' was a generic adjective commonly used by competitors.

The Supreme Court declared that terms or words that have a particular meaning or definition among the relevant public, and are considered generic or of common use, cannot be registered as trademarks by themselves. Hence, the use of 'listo' accompanied by other elements could not be prohibited. It also found that there was no graphic, visual, phonetic and conceptual similarity between LISTO and CANTV LISTO; in any case, LISTO should not have been registered in the first place, as it a generic, commonly used term.

Arguably, even though it was registered as a trademark by CDS, LISTO is a qualifying adjective that indicates the state of the relevant product/service. Consequently, any product/service identified with the LISTO mark provides an answer to the following questions: How is the product? And what is its main characteristic? Therefore, LISTO does not meet the minimum requirements to be registered as a trademark. Consequently, the term 'listo' was not registrable as a trademark, and CDS could not claim exclusive rights over that term.

Further, it is obvious that 'listo' falls within the absolute grounds for refusal set forth in the applicable legislation: as it is a common term in the Spanish language, 'listo' does not possess the essential characteristics necessary to be considered as a brand, taking into account its lack of novelty and distinctiveness.

Seeking to preclude the use in commerce of signs consisting of 'listo' accompanied by another word would constitute an abusive exercise of the trademark rights granted to CDS. The company could prohibit the use of an identical LISTO sign for identical products or services, but not the use of the term 'listo' accompanied by another element.

Dinora García, Estudio Antequera Parilli & Rodríguez, Caracas

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