SC reverses decisions due to failure to take graphic element into account

On November 12 2010 the Chilean Supreme Court accepted two annulment recourses filed by MGM Latin America LLC and reversed decisions issued by the Court of Appeals on Industrial Property Matters.

The Court of Appeals had upheld the rejection ex officio of MGM's applications for the registration of the trademark CASA CLUB TV in Classes 16 and 38 of the Nice Classification. The refusals were based on the existence of the earlier marks CASACLUB and CASA CLUB DE LECTORES EL MERCURIO, which were registered in the same classes. The court had found that there was a likelihood of error and confusion if the marks were allowed to coexist on the market.

In general, an annulment recourse aims only to ensure that the lower court has applied the law correctly. The Supreme Court accepts annulment recourses only on very rare occasions.

In the present case, the Supreme Court found that the first and second instance courts had both breached the law because they had considered only the word elements of the marks at issue, but had failed to take into account the graphic elements of the CASA CLUB TV mark. Further, the lower courts had failed to take into consideration the fact that most of the relevant public could identify the CASA CLUB TV mark due to its notoriety, which reduced the risk of confusion among consumers.

Moreover, the following factors should have been considered sufficient to rule out any likelihood of confusion: 

  • Documents submitted during the prosecution of the case demonstrated that the CASA CLUB TV mark is registered in several countries, including Argentina, Bolivia, Colombia, Peru, Mexico, Portugal and the United States; and
  • The CASA CLUB TV mark is used for a cable channel broadcasting in the whole of Latin America, including Chile, and MGM maintains a web page to promote and publicise its programmes.
Based on the foregoing, the Supreme Court considered that use of the mark CASA CLUB TV by MGM did not mislead consumers as to the origin, quality or nature of the products.

Sergio Amenábar, Estudio Federico Villaseca, Santiago

Estudio Federico Villaseca acted for MGM Latin Amercia LLC in this case.                                

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