Trademark Caselaw | Ecuador | COMO EN TV and AS SEEN ON TV Set to Coexist

OCDI, Ecuador’s Intellectual Property administrative court, recently revoked the trademark office’s decision declaring the annulment of a trade name registration for COMO EN TV (Logo), in class 35, owned by Marketing Worldwide Ecuador S.A.

The trademarks office had, initially, granted the subject registration yet later declared the annulment of such registration, based on pre-existing registrations for trademark AS SEEN ON TV (Logo), following its registrant’s action for annulment and finding both signs confusingly similar, from a conceptual point of view, since they both evoke the same idea; on top of the fact that both identify services and activities in class 35.

On the left, COMO EN TV Logo as used by its registrant.

On the right, AS SEEN ON TV Logo, as registered. No colors were claimed in connection with both logos.

However, in its February 18 decision, the court admitted Marketing Worldwide Ecuador S.A.’s appeal and revoked the annulment decision, finding that trademark AS SEEN ON TV is an English phrase, whose Spanish translation is unknown to Ecuadorian consumers and, thus, must be analyzed as a fanciful mark. Following such statement, the court also found that both signs were not confusingly similar, not phonetically nor graphically; and that under such circumstances the services or activities they identify were not relevant.

OCDI’s decision is subject to appeal.

Click here to request a copy of OCDI’s or in case you wish any additional information.