Trademark Caselaw | Colombia | Giant Secures Registration for LIV, on Appeal

After initially being refused a registration for trademark LIV, Taiwanese bicycle manufacturer Giant Manufacturing Co. Ltd. was able to secure a registration for the subject mark, in class 9, upon appealing the SIC’s refusal and introducing changes into its application.

The LIV (Logo)

Giant had originally filed an application for LIV in class 9, to identify “computers; cycle computers; protective helmets for sports; helmets for cycling; glasses; batteries for electric bikes”, which SIC refused based on a pre-existing registration for LIV (Logo), in connection with “Pre-recorded video discs, audiovisual recordings, video tapes, compact discs, DVDs and CD-ROMs”, in class 9, and communication services, in class 38.

SIC had found a connection between the computers and cycle computers identified with the proposed marks, and the goods and services identified with the pre-existing registered trademark and refused registration on October 30, 2018, which prompted Giant to file an appeal and introduce a specific amendment in the refused application, by deleting “computers; cycle computers” from the list of goods identified with the proposed mark, and limiting them to “protective helmets for sports; helmets for cycling; glasses; batteries for electric bikes”.

Upon ruling on the appeal, SIC found that Giant was not only entitled to amend its application, specifically to the list of goods, if they did not encompass expanding it; but that the new limited list of goods had not connection with the goods and services identified with the pre-existing trademark registration. Thus, upon verifying there was no connection between the goods and services identified with each mark, it also ruled the existing similarities irrelevant, since there was no way their coexistence would pose any risks of confusion or association; and consequentially granted the registration for trademark LIV.

As in many IP laws around the world, Decision 486 -which is the applicable set of IP regulations in force in Colombia and the rest of the Andean countries- allows applicant to introduce amendments on secondary aspects of their trademark applications, and it also authorizes the PTO to require such amendments, if necessary; and it is, certainly, a useful tool for applicants to overcome potential and actual refusals without entering contentious proceedings, e.g. cancellations.

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