Trademark Caselaw | Colombia | SIC Confirms BELGIAN CHOCOLATES Refusal
Earlier this month, the Colombian commerce and industry authority, SIC, confirmed its refusal of an international trademark application for BELGIAN CHOCOLATES (Logo), filed within the Madrid Protocol by The Belgian Chocolate Group NV, to identify “Chocolate and chocolate products, such as pralines, sweetmeats, sweetmeats in the form of seafood, truffles; cookies, biscuits, sweets, sugar confectionery; pastry and confectionery”, in class 30.
SIC’s Trademarks Division based its refusal on the proposed mark not being inherently distinctive.
The applicant appealed the refusal, pleading its case arguing that i) SIC failed correctly examine the proposed mark and considering all the elements thereof, when it based its decision on partial elements of the subject mark, i.e. the words BELGIAN CHOCOLATES; ii) that SIC should have considered all word elements included in the proposed mark, i.e. “THE BELGIAN – SINCE 1956 – FAMOUS CHOCOLATES”; iii) that the applicant did not claim the words BELGIAN nor CHOCOLATES and, that being the case, the title BELGIAN CHOCOLATES is nothing but “the mere denomination of the mark, just as when a mark is identified as “FIGURATIVE” or “TRIDIMENSIONAL” but not because such title is being claimed”, and thus the examination should analyze the logo submitted by the applicant; and iv) that, regardless of the title for the subject mark, it basically comprises the words “THE BELGIAN – SINCE 1956 – FAMOUS CHOCOLATES” plus a crown and ribbons designs. The applicant also argued the existence of previous cases where trademarks comprising generic terms, paired with figurative elements of non-generic terms, have been granted, and that SIC’s decision should take these additional facts into consideration, upon issuing its final decision.
In its March 14 ruling, and upon rejecting the applicant’s appeal, SIC found that its Trademarks Division was right in refusing the registration of the proposed mark, and made it clear that the proposed mark indeed consists of the words BELGIAN CHOCOLATES and a crown and ribbons design, and also discarded the applicants arguments about the additional words, because they were illegible.
The proposed mark, as submitted within international trademark application No. 1487643, where the only legible words element seems to be the word BELGIAN.
The scope of the right sought by an applicant is determined by the parameters of the application, as filed. Furthermore, if the applicant had intended to claim the words “THE BELGIAN – SINCE 1956 – FAMOUS CHOCOLATES”, it should have been made clear in the application, which the applicant failed to.
If the scope of the application was based on the words BELGIAN CHOCOLATES, at the time of filing the application as the international application shows, the applicant is not, and should not, be entitled to extend it to include additional elements.
The registration was not refused on the basis of BELGIAN CHOCOLATES being descriptive or generic, because it did include a logo, but on the basis that the proposed mark as a whole was not inherently distinctive, which is a result of its most relevant element, that is the subject words, consists of a merely descriptive expression. This, considering the reputation of Belgian chocolates in the market.
The actual logo as it seems to be used by the applicant.
Source: https://www.thebelgian.com/
Finally, SIC made it clear that its decisions are issued, based on the specific circumstances of each case and according to the applicable rules, and that other previous, and non-related cases, are not binding to a government agency, which should not necessarily mean a harm to the applicant.
Notably, from 21 jurisdictions included in the international application, the subject mark has been refused in 6 jurisdictions besides Colombia, including Cuba, India, Iceland, Morocco, Norway, Philippines and Turkey; while it has been granted in 6 other jurisdictions, including Bosnia and Herzegovina, Belarus, Algiers, Monaco, the African Intellectual Property Organization (OAPI) and Ukraine. The rest of the jurisdictions, where a final decision remains pending, include Brunei, Egypt, Cambodia, North Macedonia, Oman, Thailand and Tunisia.
Click here to request a copy of SIC’s decision or in case you wish any additional information.
