Trademark Caselaw | Ecuador | NESTLÉ Succeeds in Opposition Against TOTAL BOOST
After contradicting decisions and subsequent appeals, OCDI -Ecuador’s IP administrative court- finally admitted Société des Produits Nestlé´s opposition against a trademark application for TOTAL BOOST, filed by Italpharma Development & Industries Co. Ltd. (hereinafter, Italpharma). In connection with goods in class 05.
The Industrial Property Office had initially admitted Nestlé’s opposition, based on its pre-existing registration for trademark BOOST+LOGO, in class 05 and refused the proposed mark; yet upon ruling on Italpharma’ s appeal, which it rejected, OCDI also revoked the IPO’s decision and refused the proposed mark, based on its finding that i) while Nestlé held a registration for trademark BOOST+LOGO, it did not hold exclusive rights to the term BOOST, which it deemed to be a common and usual term, and thus weak, when applied to goods included in class 05; and ii) TOTAL BOOST was the result of two commonly used terms, which combined did not result in an inherently distinctive sign, when applied to such goods.
Nestlé, then, challenged OCDI’s decision arguing that it had erred in its findings regarding the exclusive rights over the term BOOST, the extreme similarities between trademark BOOST+LOGO and the proposed mark TOTAL BOOST, and the approach of the examination, considering both marks identify goods in class 05.
In reviewing its previous decision, since the appeal for reversal remains under the jurisdiction of OCDI, it admitted to having erred in its considerations regarding the term BOOST, finding that there was no indication that it is a common or usual term for goods in class 5 within Ecuador and that, even if the inclusion of such term in multiple registered marks may have made it weak, that is a whole different circumstance from being a common or usual term, which would mean that it was not inherently distinctive. Concordantly, it ruled that upon examining the proposed mark, TOTAL BOOST, it had to be compared with Nestlé’s trademark BOOST+LOGO and found that since they were confusingly similar and both identified food supplements, there was likelihood of confusion, which made the registration of the proposed mark inviable.
As a result, OCDI admitted Nestlé’s appeal for reversal, revoked its previous decision, once again admitted Nestlé’s opposition and, for the third time, refused the registration of the proposed mark.
There are other additional elements that make this an interesting case:
The first one would be Nestlé’s ability to appeal OCDI’s previous decision, and further plead its opposition case, even though the appealed decision had resulted in the refusal of the proposed mark; a contrasting situation with a case in Peru, where it was found there was no purpose in reviewing the opposing party’s appeal under similar circumstances.
The other interesting aspect of this case was the, not uncommon, scenario where the proposed mark is confusingly similar with two pre-existing registered marks belonging to different parties, which have coexisted without any likelihood of confusion, despite both identifying goods in class 05. In this case, OCDI found that the registration of the proposed mark could not be registered, not only as a result of Nestlé’s opposition based on its registered trademark BOOST+LOGO (which identifies different dietetic supplements), but also due to a registration for trademark BOOST, owned by Syngenta Participations AG, in connection with “preparations for destroying bugs, fungicides, nematicides, herbicides”, also in class 5.
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