Supreme Court rejects application based on slogan mark

The Supreme Court has issued its decision in a case involving a trademark and a registered slogan.

According to the Chilean Industrial Property Law, slogans can be registered with the National Institute of Industrial Property if they are combined with, or attached to, the mark for the product, service or establishment for which they will be used.

However, the jurisprudence regarding this type of registration was unclear.

According to some administrative decisions, it is sufficient that the slogan praises the qualities of the products, services or establishment to be advertised under that slogan; it does not need to have a particular degree of novelty. According to others, a slogan requires a certain degree of novelty and must not merely exalt the qualities of the goods of services. This 'novelty' requirement means that a registered slogan must have a certain degree of distinctiveness, which will constitute an obstacle to the registration of a third-party trademark that it identical or confusingly similar to the slogan.

On August 8 2013 the Supreme Court issued a decision rejecting the registration of the mark TARJETAS TRAVEL DEL BANCO DE CHILE: LA LIBERTAD DE ELEGIR by Banco de Chile for services in Class 35 of the Nice Classification, based on an earlier registration for the slogan 'Ripley Puntos - La Libertad de Elegir', which was owned by Commercial Eccsa Sociedad Anónima and covered services in Classes 35 and 36, notwithstanding the applicant's allegation that the opponent's mark was merely a slogan.

The Supreme Court thus reversed the first and second instance decisions, which had rejected Eccsa's opposition on the ground that the trademark applied for was not contrary to the provisions of the Industrial Property Law which prohibit the registration of trademarks that are similar or identical to those of others or are likely to mislead consumers as to the origin of the products or services.

The Supreme Court stated that:

• the trademark applied for contained the phrase 'La Libertad de Elegir', which was included in its entirety in the slogan registered by Eccsa; and
• registration of the trademark applied for would mislead consumers as to the source of the services to be protected.

Although this was not expressly stated in the decision, the following conclusions may be drawn:

• According to the Supreme Court, registered slogans have the necessary strength to prevent the registration not only of identical trademarks, but also of trademarks that are similar or deceitful; and
• In order to be registered, a slogan, as a whole, must have a sufficient degree of novelty; it must not merely be a common or pedestrian phrase added to a trademark. This goes against the jurisprudence of certain administrative courts.

Sergio Amenábar, Estudio Villaseca, Santiago