Supreme Court of Justice reaffirms fundamental principles of trademark law
On June 5 2013 the Supreme Court of Justice reaffirmed some of the fundamental principles of trademark law - namely those relating to the presumption of ownership of a trademark, the limits of the exclusive rights to use a mark and the impossibility of registering generic signs. All these principles are established in the Venezuelan Industrial Property Law and in international conventions currently in force in Venezuela, and have been reiterated by the jurisprudence and the doctrine.
The judgment arose from a trademark infringement action filed by Vale Canjeable Ticketven CA against Visa International Service Association and Todoticket 2004 CA. Vale sought to prevent the defendants from using the mark VALE to identify food stamps (an employee benefit established by law) based on its rights over the trademarks VALEVEN and VALEVEN ALIMENTACIÓN.
The Superior Court ruled in favour of the plaintiff. The main question considered by the court was whether the plaintiff had exclusive rights over the mark VALE from a trademark law standpoint. On appeal, the Supreme Court of Justice answered in the negative and annulled the Superior Court’s judgment.
With regard to the presumption of ownership of a trademark, the Supreme Court of Justice reaffirmed that exclusive rights over a mark are acquired only by the registration of that mark before the Intellectual Property Autonomous Service, which has competence over IP matters.
In this respect, the court held that, even though the registration of the marks VALEVEN and VALEVEN ALIMENTACIÓN conferred exclusive rights to the plaintiff, those rights did not extend to the word 'Vale' alone, as it had not been registered separately. The court further held that, since the word 'Vale' is not registered as a trademark to identify goods in Classes 16, 35 and 36 of the Nice Classification, no one could claim exclusive rights over that word just because it was included in a registered trademark.
In addition, in relation to the word 'Vale', the Supreme Court of Justice correctly held that it is a generic sign in relation to food stamps, since it means 'coupon', 'voucher' or 'ticket'. Therefore, this sign could not be monopolised by a single person or company.
The court further stated that, when the word 'Vale' is used individually, it can never lose its generic character. Therefore, it cannot be registered as a trademark and no one can claim exclusive rights over that word.
The Supreme Court of Justice nevertheless recognised that signs that consist of two generic terms may become trademarks, as long as they have their own meaning and sufficient distinctiveness. This is the case of the trademark VALEVEN, which contains the generic terms 'Vale' and 'Ven', but is distinctive when considered as a whole.
It is fortunate that, with this judgment, the Supreme Court of Justice has reaffirmed fundamental principles of trademark law, in light of the regrettable situation that Venezuela is currently facing as a consequence of its withdrawal from the Andean Pact in 2006.
Ricardo Alberto Antequera H and Maria Ruse Ruggiero G, Estudio Antequera Parilli & Rodríguez, Caracas
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