Tommy Hilfiger Case reaffirms grounds for opposition

In Tommy Hilfiger Licensing Inc v Jafer Limited (Case 0096-2003/TPI-INDECOPI), the Administrative Court has upheld the trademark registrar's decision to reject the registration of a blue, red and white banner design in relation to soaps and cosmetics on the grounds that it reproduced and imitated Tommy Hilfiger Licensing Inc's famous logo for the same goods. This decision confirms a 1998 decision on the meaning and reach of the grounds for opposition established by Article 136(h) of Andean Community Decision 486 on a Common Intellectual Property Regime.

Article 136(h) provides that the registrar may refuse registration of any sign that is identical or similar to a trademark, trade name, slogan or any other intellectual property (even when it applies to different goods or services), where use of the junior mark is likely to produce any of the following:

• confusion or association with the senior mark, or its goods or services;
  
  
• unjust appropriation of the prestige of the senior mark; or
  
  
• dilution of the distinctive power of the mark, or of its commercial or advertising value.

In the case at hand, the court rejected Jafer's application to register a banner design in blue, red and white as a trademark, finding that such a registration would create confusion with Tommy Hilfiger's mark and dilute it. It proceeded to clarify the grounds for opposition available under Article 136(h), stating that an application may be opposed if it:

• is identical to a notorious trademark (ie, reproduction);
  
  
• produces the same effect as another mark (ie, imitation);
  
  
• contains the senior mark or expresses it in another language (ie, translation);
  
  
• includes certain elements of the notorious mark (ie, transcription); and
  
  
• either represents the same mark with a different system of characters (eg, Chinese instead of Latin characters) or partially reproduces design elements of a famous mark and omits the word elements (ie, transliteration).

José Barreda, Barreda Moller, Peru