Montecristi GI stubs out MONTECRISTO registration

Ecuador

In Panama Hat Company of the Pacific v Corporacion Habanos SA (Case 119424-01), the Ecuadorian Intellectual Property Institute (EIPI) has refused to extend the registration of the MONTECRISTO mark to cover clothing on the grounds that it is confusingly similar to the geographical indication (GI) Montecristi used for hats.

Corporacion Habanos, a Cuban cigar manufacturer that owns a registration for the mark MONTECRISTO in Class 34 of the Nice Classification (tobacco products) in Ecuador and worldwide, applied to register the same mark in Class 25 (clothing). The Panama Hat Company of the Pacific (PHCP), a company that distributes Panama hats made in the Montecristi area of Ecuador, brought an opposition against Habanos's application.

In its opposition, PHCP noted that one of the finest types of Panama hat is handmade by artisans in the region around Montecristi. Haberdashers and hat connoisseurs refer to this type of hat as a Montecristi. PHCP argued that the Montecristi name is a GI and that Habanos's proposed registration would cause confusion as it referred to the same kind of goods as covered by the Montecristi GI, namely clothing and, more specifically, hats. PHCP's evidence was supported by affidavits from weavers in the Montecristi area.

The EIPI allowed the opposition and rejected Habanos's application. It agreed that Habanos's proposed registration in Class 25 would cause confusion with the Montecristi GI.

Bruce Horowitz, Paz & Horowitz, Quito

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