Trademark Office finds coffee and fish conserves similar
The Venezuelan Trademark Office (TO) has denied the appeal filed by Agroindustrial El Paují CA against the rejection of its application for the registration of the trademark CAFÉ ALCATRAZ for ground coffee and coffee beans in Class 30 of the Nice Classification (Decision 350, August 20 2007).
At first instance, the TO found that the trademark applied for was almost identical and thus confusingly similar to the mark ALCATRAZ, which covers fish conserves in Class 29.
Agroindustrial claimed that TO should not base its decision only on the fact that both marks include the word ALCATRAZ; instead, the TO should carry out a detailed study of whether the goods covered by the trademarks are in competition with each other. Agroindustrial argued that even though the marks are visually similar, the goods are not related in any way, as fish conserves cannot be replaced by ground coffee.
Dismissing the appea,l the TO based its re-examination decision on the following factors:
- Despite the fact that the marks fall within different classes, the goods covered are available on the same market and within the same channels of distribution. Consequently, there would be a likelihood of confusion between the two marks.
- The registration procedure helps ensure public order. Trademark registration protects not only individual, but also collective interests. Consequently, the state must prevent the registration of trademarks where there is a likelihood of confusion.
The criteria applied by the TO in this case seem very broad. The TO appears to be suggesting that the fact that both products could be found in supermarkets and convenience stores was sufficient to conclude that fish conserves and ground coffee are in competition with each other. However, in the author's opinion, even the most misguided consumer would arguably not confuse fish conserves with ground coffee.
María Antonieta Hands E, Estudio Antequera Parilli & Rodriguez, Caracas
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