Supreme Court: mark consisting of geographical name and descriptive term is not registrable

Chile

On March 11 2015 the Chilean Supreme Court, reversing a decision of the Court of Appeals, has accepted a recourse filed by S&K Commercial SA against a decision allowing the registration of the trademark ASIA MOTORTRADE.

The mark had been applied for by MACO SA to distinguish the following goods:

Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements (other than hand-operated); parts of engines, whether for land vehicles or not.”

The opposition by S&K was based on the section of the Chilean Industrial Property Law that prohibits, among other things, the registration as a trademark of expressions that:

  • indicate the origin of the products, services or establishments at issue;
  • do not exhibit any novel features; or
  • describe the products, services or establishments at issue.

At first instance, the National Institute of Industrial Property (INAPI) accepted S&K's opposition, stating that 'Asia' is the name of a continent, while 'Motortrade', although written in English, was descriptive of the products at issue.

At second instance, the Court of Appeals accepted the recourse filed by the applicant, rejected the opposition and granted the application. In doing so, it stated that the combination of the words 'Asia' and 'Motortrade', taken as a whole, was sufficiently distinctive to be protected as a trademark, as it was merely evocative of certain characteristics of the goods and not indicative of their origin. Moreover, the court declared that MOTORTRADE was already registered as a trademark in the name of MACO for goods in Class 12, which are related to the goods at issue in Class 7.

The opponent then asked the Supreme Court to annul the second instance decision. The Supreme Court upheld the appeal, stating as follows:

  • If it is true that the mark ASIA MOTORTRADE is a whole formed of two terms, then it is necessary to consider the distinctiveness of all the elements making up that whole.
  • Within this context, 'Asia' corresponded to the name of a continent, which indicated the origin of the products or services.
  • The name of that continent was accompanied by the foreign word 'Motortrade', which, translated into Spanish, was openly descriptive of a general activity.
  • Therefore, in rejecting S&K's opposition, the Court of Appeals had violated the sections of the law that prohibit the registration of terms indicating the origin of the products or services, or describing the activity covered by the products at issue.
  • Consequently, the decision of the Court of Appeals accepting to protection the mark applied for should be invalidated.

The Court of Appeals' decision was thus annulled by the Supreme Court, which declared that S&K's opposition should be upheld.

This decision is important in that it defines the criteria applied by the Supreme Court in this respect, in light of two very different approaches - the first one (INAPI's) being very strict regarding the fanciful character of a word or combination of words, with the other (the Court of Appeals') being more relaxed in this regard.

In this sense, it must be noted that 'Asia', as a continent, is neither a geographical indication nor a designation of origin with regard to 'motortrade'. Further, 'Asia' cannot be considered as a designation closely related to 'motortrade', even though some Asian countries (eg, Japan, China, South Korea and India) may be connected with such activity. 

Therefore, the decision seems to imply that geographical names, per se and in general, are not protectable, regardless of the products or services covered, even if the geographical term is part of a mark which, considered as a whole, may have some distinctive character.

Sergio Amenabar V, Estudio Villaseca, Santiago

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