Supreme Court issues surprising decision in opposition case

Chile
In a surprising decision, the Chilean Supreme Court has rejected an application to register a trademark for certain services in one class of the Nice Classification on the grounds that it was similar to an earlier registered trademark for different and non-related services in the same class (April 16 2008).
 
Angel Custodio Cabrera applied for the registration of the mark IMAGINACION for the following services in Class 41: 
"exhibition services for cultural and educative purposes; organization of sport competitions; conferences and congresses; education and training of medium-level technicians; teaching improvement and consultancy."
The application was opposed by Correa & Correa Consultores, which owned the mark IMAGINACCION CORREA & CORREA CONSULTORES for the following services in Class 41:
"organization services for cultural events provided through conventional means and through all communication channels, especially interactive communication through data, messages, text or a combination thereof, through computers, the Internet and other networks (oral and/or visual), fax and other analogue media (digital and/or satellite)."
Correa argued that:
  • the trademarks were similar;
  • both trademarks covered services within the same class; and 
  • use of the mark IMAGINACION was likely to confuse consumers as to the origin and/or quality of the services.
The Industrial Property Department upheld the opposition insofar as it referred to "exhibition services for cultural and educative purposes; organization of sport competitions; conferences and congresses". However, it allowed the registration of the mark for "education and training of medium-level technicians; teaching improvement and consultancy", holding that the services were sufficiently different from those covered by the earlier mark to avoid confusion among the public. The Appeal Court for Industrial Property Matters affirmed the decision.
 
Correa appealed to the Supreme Court, arguing that:
  • under the law, it was sufficient that the services covered by the later mark fell within the same class as those covered by the earlier mark; and 
  • the application should thus be rejected in its entirety. 
The court allowed the appeal and rejected the application for the registration of IMAGINACION for all services covered. The court held that services within the same class should not be differentiated in order to reach a decision in opposition actions, as such differentiation was not allowed by the law.
 
The decision is important in that it overturns the case law of the Industrial Property Department and the Appeal Court for Industrial Property Matters. In 2005 the IP legislation was amended to provide that trademark applications must specify the goods and services covered, along with the class. The law was subsequently amended to provide that in opposition cases, it is necessary to establish a relation between the goods and/or services covered by the earlier and later marks, regardless of whether they fall within the same class.
 
Sergio Amenábar, Estudio Federico Villaseca, Santiago

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