Trademark Caselaw | Colombia | SIC Confirms HP TANGO Refusal
Earlier this year, the Colombian commerce and industry authority, SIC, confirm its refusal of a trademark application for HP TANGO, filed by Hewlett Packard Group LLC, to identify “smartphone enabled printers; computer peripherals, cloud-connected MFPs, namely devices that combine print, scan and copy capabilities”, in class 9.
SIC’s Trademarks Division based its refusal on two pre-existing registrationS for trademark TANGO, in class 9, owned by Google, LLC.
The applicant appealed the refusal, pleading its case around the fact that:
HP is a well-known trademark, which means that consumers would immediately associate HP TANGO with such mark, and its owner, without any risk of confusion regarding the pre-existing registered mark;
Google, LLC, had signed a letter, stating that it would consent on the applicant obtaining a registration for the proposed trademark, since the goods identified with such mark “(…) have no connection whatsoever with the goods identified with trademark TANGO (…)”; and
One of the pre-existing registrations for trademark TANGO had been cancelled.
In its March 20 ruling, and upon rejecting the applicant’s appeal, SIC found that its Trademarks Division had made the right decision to refuse registration of the proposed mark, since one of the pre-existing registrations for TANGO, which identifies “telephones, cell phones, radio phones, batteries, battery chargers, free hand speakers for cell phones and power adapters” remained valid; and given the fact that the conflicting marks seemed confusingly similar, the existing connection between smartphone enabled printers and cell phones resulted in a clear risk of confusion.
It also found that Google’s consent was irrelevant to the case, in that it did not diminish the existing risk of confusion, and further elaborated on the point of the provision allowing for coexistence agreements, and prescribed in article 159 Decision 486, explaining that it serves the purpose of safeguarding the rights of different holders of identical or similar trademarks, from different countries within the Andean Community, by allowing them to enter into agreements that would authorize the marketing of goods identified with the subject marks, provided that they take the necessary measures to prevent confusion of the public as to the origin of the merchandise. However, as SIC concluded, it is not meant to be an exception to the provision excluding trademarks posing a risk of confusion from being granted a registration. Click here to request a copy of SIC’s or in case you wish any additional information.
