Trademark Caselaw | Venezuela | Trademark EXPRESS: Yea in Class 25, Nay in Class 45
Late last month, SAPI -the Venezuelan Intellectual Property Office- issued two contrasting decisions on claims for reconsideration regarding the refusal of trademark applications for EXPRESS in classes 25 (for clothing, including boots, shoes, and snickers) and 45 (for clothing store sales services and clothing sales by mail order).
SAPI had initially refused both trademark applications, basing its decision on the term EXPRESS not being distinctive, which led the applicant -Express, LLC- to challenge such refusals, arguing i) that the term EXPRESS may not be distinctive when applied to companies or stores selling fast food, making deliveries or any other services typically associated with fast deliveries or rendering; ii) that it did not intend consumers to believe that they would be served, or attended to, faster at EXPRESS stores than they would at other stores; and iii) that the subject term is distinctive, considering it would be applied to clothing and the sales of clothing, none of which are associated with a fast delivery.
EXPRESS store at The Galleria in Fort Lauderdale, Florida.
Upon reviewing Express, LLC’s claims and issuing its decisions, both published on September 21, 2021, SAPI had differing views on the proposed mark, EXPRESS, in each case:
In the case of class 25, SAPI found that it erred in its initial examination, since “trademark EXPRESS (…) did comply with the concept of a trademark as prescribed in article 27 of the Industrial Property Law, and is not included within any non-registrability scenarios prescribed in the subject law” and, thus granted the subject mark; and
Regarding class 42, SAPI found that although it erred in its initial refusal, it was not due to the proposed mark being registrable, but because instead of not being distinctive, it should have been refused for being descriptive, when applied to the list of services in class 42 and, thus, rejected Express, LLC’s claims, modifying its original decision.
These contrasting conclusions are not necessarily wrong, as it could be argued that the proposed mark is, indeed, descriptive when applied to certain services. However, there are other aspects of these cases worth exploring, from the applications being filed over 27 years ago -on June 16, 1994- and refused after 16 years, on June 18, 2010, to the fact that at that time of filing, the Common Regime on Industrial Property (at the time, Decision 344) was in force, since Venezuela was still a member to the Andean Community.
However, even more interesting than SAPI’s severe backlog or its retroactive application of the Industrial Property Law, is the fact that SAPI did not seem to change course on its practice of refusing trademark applications outside of the specific grounds for refusal set out in the subject Law, by coming up with what seems to be an incorrect interpretation of article 27 thereof. This practice, which started during 2010, has resulted in more than 9,000 illicit refusals during the last 11 years.
Article 27 of the Industrial Property Law, which dates from 1955, reads as follows:
“Article 27.- The trademark denomination comprises every sign, figure, drawing, word or combination of words, caption or any other signal having novelty, used by a physical or legal person to distinguish the goods it produces, those with which if engages in trade, or its own enterprise.
The trademark whose objective is to distinguish an enterprise, business, exploit or mercantile, industrial, agricultural, or mining establishment, is called a commercial denomination.
A slogan if the trademark consisting of a word, phrase or caption used by an industrial, trader or agricultor, as an accessory to a trademark or a commercial denomination”.
The return to an Industrial Property Law passed during 1955 has created multiple inconvenients for IPR holders and applicants, including and SAPI overeaching its powers in an attempt to make up for the legal vacuum resulting from anachronistic provisions in the Law.
Much can be said about the subject provision, considering it was drafted well over 66 years ago: It mentions novelty, instead of distinctiveness, as a trait or requirement of a trademark, seems to conflate trademarks with trade names and slogans, and makes no specific reference to service marks. However, there does not seem to be a reasonable, or legal, way to conclude that it prescribes any grounds for refusing a trademark application, as such grounds are specifically prescribed in articles 33, 34 and 35 of the Industrial Property Law.
Granted, articles 33, 34 and 35 do not prescribe a specific provision for refusing certain trademarks, i.e. where they are not inherently distinctive; yet, although that is a problem in itself, it cannot be solved through an overreach of SAPI’s powers. A trademark application can only be (legally) refused, based on these specific articles, since no other provision in the Industrial Property Law prescribes prohibitions or exclusions regarding the registration of a trademark, and refusing a trademark application is not a discretionary power of the Industrial Property Registrar; thus, when confronted with a trademark that cannot be refused based on articles 33, 34 and 35, the only legal option is to grant its registration.
Such a conclusion is not only centered on basic logic, but also on articles 81 and 82 of the Industrial Property Law itself, which specifically prescribe:
that once an application goes unopposed, of if an opposition is dismissed, “(…) the Registrar will effect the trademark registration, where appropriate, and issue the corresponding certificate”; and
that “When the application is included in the prohibitions prescribed in articles 33, 34 and 35 of this Law, its registration will be refused through a written and reasoned resolution by the Registrar”.
This problem has been thoroughly discussed within the local agent’s community and was the subject of a webinar organized by Covapi, as we reported back on June 10, 2020; yet there does not seem to be a clear indication that SAPI would be willing to address it and change course, at least not yet.
Click here to access both decisions and contact us for more information.
