Trademark Caselaw | Ecuador | Redbull’s trademark set to coexist with TORO ROJO
OCDI, Ecuador’s Intellectual Property court, recently revoked the trademark office’s dismissal of Rebull GmbH’s opposition against a trademark application for TORO ROJO, in class 5.
In its February 11 decision, the court rejected Redbull’s appeal against a resolution overturning the trademark office’s decision admitting its opposition, which was based on both the well-known status of trademark REDBULL® as well as its ownership of a registration for TORO ROJO, in class 32. It found no competitive connection between goods in classes 5 and 32, not even between energy drinks and dietary supplements, stating that despite having certain similarities, the circumstances under which they are consumed are different, with the former usually being consumed in order to avoid exhaustion, and fatigue, in a specific situation; while the latter is consumed as a treatment for a prolonged or chronic situation, caused by a specific deficiency. It further established a difference between situations arising when goods can be used together, and when they must be used together and thus deemed related and/or interchangeable.
The court also made statements regarding aspects of the preferential right arising from the cancellation of a trademark, as well as the burden of proof when claiming a trademark’s well-known status, under both the Ecuadorian and Andean Community legal systems:
In rejecting the applicant’s claim to a preferential right to the subject mark, as a result of being the victorious party in a trademark cancellation proceeding, the court stated that the application claiming a preferential right, must be filed for the same cancelled mark or for a similar one, and in the same class, to identify the same goods/services as the cancelled registration.
On the other hand, in rejecting the Redbull’s argument regarding the well-known status of its REDBULL® trademark, the court further stated that:
The party claiming the well-known status of a trademark must prove such circumstance as taking place in Ecuador and/or any other member to the Andean Community (Bolivia, Colombia or Peru). Therefore, as impressive as evidence relating to the global market value of a trademark may be, it will not serve the purpose of establishing its well-known status if it is not relevant to any of those jurisdictions.
Affidavits originating from the party claiming the well-known status of a trademark tend to be bias with regards to such party’s claim, thus although valid, they are not a suitable piece of evidence for that purpose.
Documentary evidence must comply with local legalization requirements, especially if it consists of official documents.
The well-known status of a trademark must be proved in every case where it is claimed, therefore the effects of prior decisions establishing such status do not automatically extend to subsequent cases.
Click here to request a copy of OCDI’s or in case you wish any additional information.
