Advertising company successfully enforces mark, despite it being descriptive

Venezuela
A court has ordered an advertising company to refrain from using the trademark PUBLICIDAD ALTERNATIVA for its advertising services.

Publicidad Alternativa 2025 CA
has been engaged in the advertising business since 1998. It was arguably the first company to offer advertising options through non-traditional methods in the Venezuelan market. Publicidad Alternativa offers, among other things, advertising on buses and other vehicles, as well as mobile billboards. Publicidad Alternativa is now the leader in non-traditional advertising, and covers the whole of the territory.

Publicidad Alternativa decided to apply for the registration of the trademark PUBLICIDAD ALTERNATIVA ('alternative advertising') for advertising services in Class 35 and for paper and printing goods in Class 16 of the Nice Classification. Both applications were granted in 2006.

In 2007 Publicidad Alternativa became aware that a company based in the city of Valencia (the third largest in Venezuela):
  • was promoting non-traditional advertising services under the trademark PUBLICIDAD ALTERNATIVA;
  • had incorporated a company under the name Publicidad Alternativa CA; and 
  • had registered the domain name 'publicidadalternativa.com.ve'.
Moreover, Publicidad Alternativa was notified by a client that a payment owed to it had mistakenly been made to the other company.

Publicidad Alternativa requested that a judge with jurisdiction in Valencia perform a judicial inspection at the address of the defendant. This inspection was successfully executed in March 2007 and the judge attested that the defendant used the trademark PUBLICIDAD ALTERNATIVA without the trademark owner's consent.

Publicidad Alternativa then sought a preliminary injunction, which was granted in April 2007. The court ordered that the defendant refrain from using the trademark PUBLICIDAD ALTERNATIVA for its commercial activities. As the parties failed to reach agreement, the case was moved to trial.

After court proceedings lasting over two years, on July 8 2010 the court ruled in favour of Publicidad Alternativa, finding that:
  • Publicidad Alternativa owned exclusive rights in the trademark PUBLICIDAD ALTERNATIVA; and
  • Publicidad Alternativa had sufficiently demonstrated during the main trial that the defendant had infringed its trademark rights.
The court thus ordered that the defendant:
  • refrain from using the trademark PUBLICIDAD ALTERNATIVA;
  • refrain from importing, manufacturing or distributing goods bearing the trademark PUBLICIDAD ALTERNATIVA;
  • remove and destroy all goods bearing the trademark PUBLICIDAD ALTERNATIVA; and
  • publish the decision in a newspaper.
Ricardo Enrique Antequera, Estudio Antequera Parilli & Rodríguez, Caracas

Estudio Antequera Parilli & Rodríguez acted for the plaintiff in this case.

Get unlimited access to all WTR content