Trademark Caselaw | Colombia | SUPREME Overcomes Initial Refusal
The proposed mark, in red and white, was filed in connection with the following goods, in class 25: “shirts; tee-shirts; jerseys; thermal suits; parkas; cardigans; sweaters; pants; denim jackets; shorts; boxer shorts; sports jerseys; sweat shirts; sweatshorts; tracksuit bottoms; sweaters; vests; jackets; coats; blazers; suits; swimsuits; headbands; underwear; thermal underwear; scarves; handkerchiefs; belts; boots; rainwear; shoes and sports shoes; explicitly excluding caps, uniforms, nurse dresses, nurse coveralls, nurse overalls or any other garment for nurses or surgery”.
The Trademark Office, at SIC, initially refused the registration of the proposed mark based on a pre-existing registration for SUPREME (Logo), in classes 5 and 25, owned by local company Protex S.A.
Supreme appealed the refusal arguing that the Trademark Office failed to consider the specificity of the goods identified with each mark, i.e. where the cited registration covers certain specific clothing goods for nurses, and the proposed mark explicitly excluded such goods, and that they cater to different needs and, therefore, are not interchangeable.
In its October 20 decision, SIC ruled in favor of Supreme and, despite remarkable similarities between the proposed and registered marks, found that there was no actual connection between the goods they identify. Although in the same class, the previously registered mark identifies “caps, uniforms, nurse dresses, nurse coveralls, nurse overalls” while the proposed mark identifies goods such as “shirts, tee-shirts, jerseys, jeans” but explicitly excludes those identified with the registered mark, a fact that SIC considered to rule out any competitive connection between them.
Trademark SUPREME (logo), in white and blue, as registered by Protex S.A.
As a result, SIC concluded that there was no likelihood of confusion (nor association) between the subject marks and, thus, revoked the Trademark Office’s refusal and granted the proposed mark.
Click here to read SIC’s decision and contact us for any additional information.
