Trademark Caselaw | Colombia | Cancellation of Trademark Registration for CHAMPION Confirmed
The Council of State, recently confirmed a decision from SIC, the Industry and Commerce authority in Colombia, which partially cancelled Federal Mogul Ignition Company’s registration for trademark CHAMPION, in class 09.
Federal Mogul Ignition Company sought the annulment of three specific SIC resolutions that partially cancelled its registration No. 180987 for trademark CHAMPION, in class 09, in order to exclude “batteries for automobiles” from the corresponding list of goods and rejected subsequent administrative appeals.
Coexito S.A., a local company, had filed for the partial cancellation of the subject trademark cancellation in order to exclude “batteries for automobiles”, arguing that the registrant had not used it in connection with such specific goods. Federal Mogul Ignition Company, on the other hand, produced evidence showing use of the subject mark in connection with “spark plugs”, goods that it claimed are similar and have a competitive connection with “batteries for automobiles” despite the fact that they belong in class 07.
SIC ruled in favor of Coexito S.A., as it found that the registrant did not produce evidence showing use of trademark CHAMPION in connection with “batteries for automobiles”, which led Federal Mogul Ignition Company to appeal said decision and seek the annulment of all three resolutions with the Council of State, after its appeals were rejected, claiming that SIC erred in its decision by failing to take into consideration the fact that a trademark registration should not be cancelled if the registrant establishes use of goods that are similar or have a connection with those specifically identified in such registration. It also argued that the partial cancellation of its registration, excluding “batteries for automobiles”, and the subsequent grant of a registration for the same mark in connection with such goods would lead to a risk of association.
In its decision of March 18, 2021, the Council of State rejected Federal Mogul Ignition Company’s claims, based on an Interpretation from the Court of Justice of the Andean Community, as well as its own precedents, regarding the correct interpretation of the specific rules governing trademark cancellations, i.e. article 165 Decision 486, according to which use of goods similar or connected to those specifically identified in a trademark registration would be relevant and sufficient for the purpose of avoiding a cancellation, as long as they belong in the same class.
The Interpretation form the Court of Justice of the Andean Community set the boundaries for the manner in which article 165 Decision 486 shall be applied to the case at hand and made it clear that use of similar goods to those identified in a trademark registration would be relevant for avoiding cancellation, provided they are included in the same class.
The Council of State also found that, under article 165 Decision 486, it was not possible to stretch the subject analysis beyond goods included in the same class, thus use of “spark plugs” in class 07 was not enough to avoid the partial cancellation of the registration with regards to “batteries for automobiles” in class 09.
Click here to request a copy of the Council of State’s decision or in case you wish any additional information.
