Trademark Caselaw | Chile | Supreme Court Upholds Indian Motorcycle Opposition
The Supreme Court of Chile recently confirmed INAPI’s decision admitting Indian Motorcycle International LLC’s opposition against a trademark application for THE WORLD'S FAVOURITE INDIAN, filed by Bajaj Auto Limited, an Indian company, in classes 12 and 35.
The court ruled that both INAPI and the Industrial Property Court were right in their findings that the conflicting marks, INDIAN (Logo), INDIAN MOTORCYCLE RIDERS GROUP (Logo) and THE WORLD’S FAVOURITE INDIAN, were confusingly similar.
Indian Morotcycle International LLC’s logos found to be well-known trademarks by INAPI
INAPI found that the conflicting marks shared the term INDIAN as the most relevant component thereof, without the proposed mark’s additional terms making them any less similar. It also found that the goods and serviced identified by both parties’ marks related. Goods identified with the INDIAN (Logo) include motorcycles, parts, clothing and retail services, while the goods and services identified with the opposed mark include automobiles, motorcycles, parts thereof, as well as sales services thereof. It also included business management; business administration and office function services, in class 35, which INAPI found not related to those identified with the INDIAN (Logo) marks.
Finally, in finding the INDIAN (Logo) to be a well-known trademark, INAPI laid down the requirements for the protection of foreign well-known trademark in Chile, as prescribed in article 20.g.1° of its Law No. 19,039:
The trademark claiming protection must be registered in a foreign country;
It must be well-known to the relevant sector of the public; and
The conflicting marks must be confusingly similar.
INAPI’s analysis of the evidence supporting the well-known status of the INDIAN marks seemed to be less stringent than those taking place in other jurisdictions, since the subject evidence basically consisted of documentation originating from the opposing party, such as different printouts from its website showing promotion of such marks for the American, Canadian, Brazilian and Japanese; brochures, and catalogs, and press releases, as well as a printout of the company’s Facebook profile for Chile, showing promotion and advertising of its marks, and over 200,000 followers.
Bajaj Auto Limited was able to secure a partial grant for the proposed mark in connection with business management; business administration and office function services, in class 35.
Click here to request a copy of INAPI’s decision or in case you wish any additional information.
