Trademark Caselaw | Peru | INDECOPI’s IP Court Confirms Decision on BOSCH Trademark Opposition

INDECOPI, Peru’s Intellectual Property authority, recently confirmed its refusal of a trademark application for ROSCH (Logo) in class 35, file by Selecon Ingenieros S.A.C., as a result of the opposition filed by Robert Bosch GmbH.

Trademark ROSCH (Logo), as filed with INDECOPI.

INDECOPI had admitted Bosch’s opposition and refused registration of the proposed mark, ROSCH (Logo), based on it being confusingly similar with trademark BOSCH, in addition to the existing connection between the goods identified with the subject trademark, in class 9, and the services identified with the proposed mark, in class 35; a decision that was later appealed by the applicant, on October 19, 2010.

The applicant argued that i) the proposed mark, ROSCH (Logo) had additional elements that made it different from the pre-existing registered marks, and that the term ROSCH, itself had a specific meaning in German, which also added to it being conceptually different from such marks; ii) that INDECOPI failed to take into consideration that syllables “OSCH” and “OCH” were common use elements in class 35; and iii) that the services identified with the proposed mark in class 35 were not connected to those identified with the pre-existing registered marks, in class 9.

In its February 13 decision, INDECOPI’s Intellectual Property Court dismissed the applicant appeal and further elaborated on the fact that the word element was predominant in the case of the proposed mark, and that the fact that it shared the exact same sequence of vowels and consonant letters as the previously registered mark, BOSCH, made them graphically and phonetically similar. It also found that both the German meaning of the term ROSCH to be irrelevant, since it was not known to the general public, in Peru.

As for the goods and services identified with both marks, the Court found a clear connection services consisting of the grouping of audiovisual goods, such as interactive screens of video controllers, in class 35, and those identified with the pre-existing registered trademarks, in including apparatus for registering, receiving and visualizing data, images and sounds, as well as screens, among others.

The Court had also considered the fact that Bosch based its opposition both on Peruvian and Colombian trademark registration, pursuant to article 147 Decision 486, which allows for the registrant or the applicant of a trademark in an Andean country (Bolivia, Colombia, Ecuador or Perú), or  to oppose a confusingly similar trademark in any other jurisdiction belonging to the Andean Community, as long as it establishes its interest in such jurisdiction, by also seeking protection in such jurisdiction by filing a trademark application.

Click here to request a copy of the court’s decision or in case you wish to receive any additional information.