Trademark Caselaw | Chile | CACHAREL: Cosmetics, Apparel and Eyewear Not Connected

Chile’s Industrial Property Court recently confirmed a decision from INAPI, Chile’s patents and trademark office, in which it found no competitive connection between cosmetics and apparel included in classes 3 and 25, and eyewear, included in class 9; and ruled that virtually identical trademarks CACHAREL and CACHAREL (Logo) could coexist without posing any risk of confusion.

Trademark CACHAREL (Logo) as registered by the opponent

Failure to produce evidence supporting the connection between the goods identified with its trademarks and the proposed mark, as well as the well-known status of trademark CACHAREL (Logo) was a key factor in INAPI’s and Courts0s dismissal of the opposition.

In its March 12, confirming the dismissal of an opposition filed by Comercial Eccsa Sociedad Anonima and Jean Cacharel, against a trademark application for CACHAREL, filed by Alvaro M. Valente in class 9 to identify optical eyewear (glasses, sunglasses and frames, among others). The opposition was based on the opponent’s registrations for CACHAREL (Logo) in classes 25, for clothing, footwear and headgear; CACHAREL in classes 35 and 39 for the importing and distribution of goods in classes 23, 24 and 25; JEAN CACHAREL, registered as a trade name associated with an commercial establishment for the purchase and sale of scientific, nautical, geodesic, photographic, cinematographic, optical apparatus, in class 9, in the metropolitan region, as well as other registrations for CACHAREL in classes 3, 14, 18, 24 and 25; and the well-known status of its trademark. The opponent claimed that, since the conflicting marks were confusingly similar and identified goods and services that were connected, consumers would tend to assume they all originate from the same source.

INAPI’s decision, as confirmed by the court, ruled that the opponent had the onus to establish a connection between the goods and services identified with its trademarks, and those goods identified with the proposed mark, as well as the well-known status of its trademarks; and that it had failed to produce evidence supporting such claims. Furthermore, it found that there was no coincidence or connection between the goods identified with the proposed mark and those identified with the opponent’s trademarks, since they differ in their nature, function and purpose and were sold through completely different channels and did not compete between them. It also stated that, although the trade name registration referred to the sale of goods in class 9, a trade name registration would not cover the goods themselves, unless it expressly stated so.

The court’s decision in this case, although justified to a certain degree inasmuch as the opponent failed to produce evidence supporting the opposition, seems inconsistent with decisions throughout the region, where it has been found that goods such as apparel, cosmetics, handbags, watches or jewelry are commonly used with the purpose of presenting oneself in a desired manner, and therefore are deemed connected as part of an overall style or fashion.

Click here to request a copy of INAPI’s decision, as confirmed by the court, or in case you require any additional information.