Recent efforts by US Customs and Border Protection, the Jamaica Constabulary Force and INTERPOL are a stark warning to counterfeiters in the region – particularly where fake goods are linked to organised crime and terrorism.
With no unified trademark system and a rich landscape of languages and practices, the Caribbean is a highly nuanced terrain with some potential pitfalls that brand owners and practitioners must navigate. Read more
The Puerto Rico Trademark Office has recently approved for publication a number of trademarks consisting of arbitrary arrangements of one, two or three letters. Due to their arbitrary nature, one, two or three-letter marks qualify for trademark protection without need for proof of secondary meaning.
In <I>Oriental Financial Group Inc v Cooperativa de Ahorro y Credito Oriental</I>, on remand from the US First Circuit, the District Court for the District of Puerto Rico has determined that the mark COOP ORIENTAL did not infringe the ORIENTAL mark, even though both marks are directed at financial services. The opinion shows that legally mandated terms such as '<I>coop</I>' or '<I>cooperativa</I>' may serve to create distinctions in otherwise identical marks.
An intense quarrel over the name Assemblies of God and its Spanish counterpart, <I>Asambleas de Dios</I>, has landed in the US District Court for the District of Puerto Rico, in a case transferred from a sister court in the Western District of Missouri. In 2002 a previous lawsuit had been filed by the same plaintiff against the same defendants.
In <I>Díaz v Pérez</I>, which concerned an employment claim against the Bayamón Cowboys basketball team, the team manager and the Basketball League, the Appeals Court of Puerto Rico has discussed the nature of franchise agreements. Among other things, the court held that a franchisee benefits from the use of a known trademark while retaining independence and, at the same time, receiving assistance and training from the franchisor.
Musical group Atención Atención Inc, which specialises in the creation of educational and entertainment content for children, has sued rapper David Sánchez Badillo, better known as Tempo, for trademark dilution by tarnishment. According to the complaint, Tempo made use, without authorisation, of the plaintiff's federally registered trademarks on one of his music tracks.
In <I>Compania de Turismo de Puerto Rico v Oasis Inn Corp</I>, the Court of Appeals has confirmed an order enjoining a lodge from using the mark PARADOR as part of its commercial name. The PARADOR mark is owned by the Tourism Company of Puerto Rico, which certifies lodges into the Parador programme. Among other things, the court held that laches could not prevent the Tourism Company from exercising a legal right and obligation.
In <I>Colón-Lorenzana v South American Restaurants Corp</I>, the US Federal Court for the District of Puerto Rico has dismissed the plaintiff’s claim that the defendant had registered the mark PECHU SANDWICH without his consent, in a knowingly fraudulent manner. Among other things, the court held that the conception of an idea for a mark or solicitation for advertising of a mark did not constitute the use required to acquire rights over a mark under the Lanham Act.