Navigating Uncertainty in the Face of Descriptive Marks

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Linette Conley
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1 Navigating Uncertainty in the Face of Descriptive Marks Big Burger Cherry Soda and the mark distinguishing the product? Margarita Garate Intellectual Property Owners Association San Antonio, Texas (September 9-11, 2012)

2 LATIN AMERICA Brazil & Mexico Registrability and Enforceability

3 Paris Convention for the Protection of Industrial Property Brazil and Mexico are both members of the Paris Union. These two countries, among the other contracting parties, developed their corresponding IP legislation bearing in mind the following trademark provisions: Article 6 Marks: Conditions of Registration; Independence of Protection of Same Mark in Different Countries (1) The conditions for the filing and registration of trademarks shall be determined in each country of the Union by its domestic legislation. (3) A mark duly registered in a country of the Union shall be regarded as independent of marks registered in the other countries of the Union, including the country of origin.

4 Article 6quinquies Marks: Protection of Marks Registered in One Country of the Union in the Other Countries of the Union A. (1) Every trademark duly registered in the country of origin shall be accepted for filing and protected as is in the other countries of the Union, subject to the reservations indicated in this Article. Such countries may, before proceeding to final registration, require the production of a certificate of registration in the country of origin, issued by the competent authority. No authentication shall be required for this certificate B. Trademarks covered by this Article may be neither denied registration nor invalidated except in the following cases: (ii) when they are devoid of any distinctive character, or consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, place of origin of the goods, or the time of production, or have become customary in the current language or in the bona fide and established practices of the trade of the country where protection is claimed;

5 DOMESTIC LEGISLATIONS TRADEMARK *Brazil and Mexico include within their respective IP Laws specific sections regulating the registration procedure over trademarks (Title III DAS MARCAS within the Brazilian Law and Title IV, Chapter I DE LAS MARCAS within the Mexican Industrial Property Law). *Although there are several differences within the registration procedure, both legislations: (i) refer to the first to file system, (ii) provide a clear definition for the trademark concept, (iii) include an exhaustive list containing the prohibition hypothesis related with trademark registration (in other words a list of the signs which are not subject to registration).

6 TRADEMARKS registration Articles 122, 123 and 129 of the Brazilian Law which regulates the rights and obligations related with industrial property sets forth: The ownership and exclusive right of use over a mark is acquired by the granting of its registration and, for such purposes, distinctive visually perceived signs that distinguishes products or services from others (and are not legally prohibited) may be registered. Articles 87 and 88 of the Mexican Industrial Property Law provides that: The right to exclusive use of a mark is obtained by its registration in the Mexican Industrial Property Institute, a mark being understood for these purposes as any visible sign that distinguishes products or services from others of the same kind or class in the market.

7 SIGNS not subject to registration Article 124 of the Brazilian Law establishes that the following may not be registered as marks: VI. Signs that are by nature generic, necessary, common, vulgar or simply descriptive, when they are related to the product or service to distinguish, or in the case of those commonly used to designate a characteristic of the product or service, such as its nature, nationality, weight, value, quality and period of production or rendering of the service, unless they have a sufficiently distinctive character. Article 90 of the Mexican Law provides that the following may not be registered as marks: IV. The names, figures or threedimensional forms that, considering their characteristics as a whole, are descriptive of the products or services to be protected as a mark. Included in this premise are descriptive or indicative words that in the market serve to designate the kind, quality, quantity, composition, destination, value, place of origin of the products or period of production..

8 RATIO LEGIS (DESCRIPTIVENESS PROHIBITION) NEED to: - avoid unfair competition, - prevent the individual appropriation of an expression, term or sign that is of such a common nature that all merchants, manufacturers or providers have the right to use it. PREMISES: (i) Lack of distinctiveness, and (ii) Availability.

9 PROHIBITION ON DESCRIPTIVENESS *Articles 124 of the Law and 90 of the Industrial Property Law do not include an exhaustive definition of the concept of descriptiveness nor provide the scope and/or limits of such prohibition on registration. *The examination of this prohibition will depend on the examiner s discretion (based on what he/she considers descriptive).

10 Criteria related with the descriptiveness prohibition (Mexican Administrative Courts). 1. DIRECT CONNECTION between the sign and the product or service. 2. CAPRICIOUS SPELLING OR TRANSLATION DOES NOT CONFER THE DISTINCTIVE NATURE THAT IS REQUIRED FOR REGISTRATION. 3. PROOF NOT REQUIRED.

11 Borderline descriptive marks which are subject to registration in Mexico. A. COMPOSITE MARKS with one distinctive element: A mark that has TWO elements, one descriptive and the other not, may be registered, provided that the non-descriptive element is sufficiently important to introduce in itself a differentiating element. Examples: PEPSI LIGHT, COCA-COLA LIGHT, LALA LIGHT or YOPLAIT LIGHT, all including the descriptive term LIGHT or FUD MINI, MINI RITZ, MINI KISSES or MINI CRUNCH, all including the term MINI from MINIATURE.

12 Borderline descriptive marks which are subject to registration in Mexico. B. EVOCATIVE SIGNS: A mark referring to an evocative sign, may be registered, as it suggest an idea about the product or service (but do not describe it nor its nature or utility). Example: The Spanish word COMODO (comfortable) allows the capricious spelling KOMODO such term may not be registered as a trademark because of its descriptiveness. However, the term KOMODINI even though it suggests the idea of feeling comfortable is subject to registration based on the indirect connection with the protected goods (shoes).

13 DESCRIPTIVENESS IN BRAZIL *Similar to Mexican law and practice, in order for this prohibition to apply, there must be a direct relationship between the sign to be registered and the product or service to which it will be applied. *The final part of section VI of article 124 of the Law establishes that when a descriptive term is covered with a sufficient distinctive form it will be registrable, as for example: certain stylizations, composite marks and evocative marks.

14 REGISTRATION = EXCLUSIVE RIGHT TO USE DENIAL OF REGISTRATION = NO EXCLUSIVITY The law of both countries provides for the possibility of the petitioner challenging the decision to DENY REGISTRATION. Brazil: 60 day term to appeal. Mexico: 15 day term (revision appeal before the same authority) or 45 day term (nullity claim before the Federal Court of Tax and Administrative Justice).

15 ENFORCEMENT (act or process of compeling compliance with...) NON AUTHORIZED USE OF A REGISTERED TRADEMARK ILLEGAL USE INFRINGEMENT

16 DESCRIPTIVE TERMS REGISTERED AS TRADEMARKS. Despite the regulation prohibiting the registration of descriptive signs, several descriptive terms are currently registered as trademarks (implying an exclusive right of use). How to proceed when you encounter descriptive marks registered by your competitor?

17 Brazil and Mexico include within their IP Laws a nullification action based on the granting of a mark registration in violation of the applicable legal provisions. Articles 165 and 168 of the Brazilian Law: (i) the registration that has been granted in violation of the provisions of this Law is null and void and/or (ii) the nullity of a registration will be administratively declared when it has been granted in violation to this Law. Article 151 of the Mexican Industrial Property Law: the registration of a mark will be null and void when it has been granted in violation of the provisions of this Law or the law that was in force at the time of its registration.

18 NULLIFICATION (SIMILIARITIES) BRAZIL Legal standing is required for both the judicial or the administrative proceedings. PROCEEDINGS MEXICO Any person with legal standing may claim the nullification of a registered trademark that is descriptive either through a claim or a counterclaim. In both countries the nullification resolution will have retroactive effects.

19 NULLIFICATION (DIFFERENCES) PROCEEDINGS BRAZIL MEXICO The nullity proceeding indicated in article 165 of the Law is a judicial action while the nullity proceeding provided for by article 168 of this same Law is an administrative action. Only provides an administrative action.

20 NULLIFICATION (DIFFERENCES) PROCEEDINGS BRAZIL - The administrative nullity action should be filed before the National Institute of Industrial Property (INPI) within 180 days from the granting of the registration. The judicial nullity action should be filed before the Civil Courts within a term of 5 years after its granting. - The administrative proceeding before INPI does not allow for appeals as it is the only instance. In contrast, the judicial action will follow the same instances (including those of appeal) as any other proceeding.

21 NULLIFICATION (DIFFERENCES) PROCEEDINGS MEXICO - The administrative nullification proceeding should be filed before the Mexican Institute of Industrial Property (IMPI) which will resolve it within approximately 12 to 15 months. Subsequently, any of the parties may challenge such resolution by means of a nullity complaint before the Federal Court of Tax and Administrative Justice and, afterwards, through an amparo lawsuit with the Federal Collegiate Administrative Courts.

22 COSTS - LOST PROFITS & DAMAGES BRAZIL: If elements for a claim for damages and lost profits exist, this may only be asserted in the judicial sphere (although there is some ambiguity as to whether they should be claimed in the same action or in a separate procedure). MEXICO: In the administrative nullity proceeding it is not possible to demand payment of costs or claim damages and losses. It is worth pointing out that once a mark is registered (even when it is descriptive) its use by the holder is derived simply from the EXERCISE OF A RIGHT. Therefore, a licit act such as the exercise of a right is unlikely to give rise to a claim for damages and losses (even when the trademark registration has been annulled). Now, while it is true that a claim for damages and losses is invalid in this context, it is also true that the one responsible for such granting is the State and thus a claim may be filed against the State in this respect.

23 THANK YOU!!! Should you have any doubts or comments please contact me at:

TRIPS Article 15 Protectable Subject Matter

TRIPS Article 15 Protectable Subject Matter 1. Any sign, or any combination of signs, capable of distinguishing the goods or services of one undertaking from those of other undertakings, shall be capable