Supreme Court of Justice recognises supremacy of parties' intent

On July 23 2012 the Supreme Court of Justice ruled in favour of World Vision International, annulling the first and second instance decisions and allowing the registration of the trademark WORLD VISION in Class 9 of the Nice Classification.

The decision is important in that it recognises the supremacy of the parties’ intent over an ex officio rejection by the Trademark Office in cases where the provisions of a co-existence agreement do not violate the earlier rights of third parties and are not likely to mislead the consumer public.

World Vision International applied to register the trademark WORLD VISION for “movies, DVDs, CDs, slides, pre-recorded audio and video tapes and cassettes related to hunger relief, poverty, healthcare, disease prevention and other social and humanitarian aid activities" in Class 9. The application was not opposed by Worldvision Enterprises LLC, the owner of the registered trademark WORLDVISION for “photographic, cinematographic and radiographic movies" in Class 9, due to a co-existence agreement previously entered into by the parties.

The Trademark Office and the Special Court of Appeals rejected the application ex officio, despite the terms of the co-existence agreement, arguing that there was a likelihood of confusion between the marks.

World Vision International requested that the Supreme Court annul these decisions. In support of the appeal, World Vision International argued that the decisions were in violation of Articles 16 and 20(f) and (h) of the Industrial Property Law.

Article 16 provides that "the evidence shall be assessed in due conscience"; according to World Vision International, this provision had been infringed since the co-existence agreement, which reflected the parties’ intent, had not been considered. The Trademark Office and the lower court had thus disregarded the rules of logic and experience as a result of the incorrect application of the legal grounds for rejection under the Industrial Property law.

Article 20(f) and (h) provide that the following signs cannot be registered as trademarks: "expressions that mislead or deceive as to the source, quality or type of the products, services or establishments", and "identical marks or marks that graphically or phonetically so resemble one another as to be confused with other marks that have been previously registered or validly filed in the same class". World Vision International argued that these provisions had been infringed because the following factors had not been considered:

• the explicit authorisation to use the trademark included in the agreement;
• the differences between the products covered by the marks, their marketing channels and target consumers; and 
• the co-existence of the marks in the European Union.

The Supreme Court stated that, because the parties had signed a co-existence agreement and no opposition or objection had been filed by World Vision Enterprises Inc, the ex officio powers of the Trademark Office and the second instance court were limited by the agreement. The Trademark Office and the second instance court should have considered the validity and effects of the agreement. Therefore, the Supreme Court decided that there was no legal impediment to the registration of WORLD VISION by World Vision International.

As World Vision International's recourse was accepted, the Supreme Court issued a replacement opinion stating that the visual and phonetic similarities between the signs were irrelevant in light of the co-existence agreement between the parties. The court thus allowed the registration of the trademark WORLD VISION (Application 902.354) in Class 9.

This resolution should change the Trademark Office’s practice: previously, the office dismissed co-existence agreements filed by the parties in almost every case and did not consider the parties’ intent.

Sergio Amenabar V and Alexandra Howard T, Estudio Villaseca, Santiago