The Booking.com Case and Secondary Meaning in Latin America

It has been 24 hours since the United States Supreme Court held its first ever oral arguments by phone and the reactions have been as varied as one would imagine, from pointing out to one Justice breaking its usual silence during arguments or to another Justice conflating legal terms associated with the case, and also wondering whether it encompasses changes in how the court will operate and how accessible oral argument hearings will be post Covid-19.

Others focused on the case at hand and how much of an effect it could have on registered trademarks in the United States. It started with the rejection of four trademark applications for BOOKING.COM, which the United States Patent and Trademark Office deemed to be generic when applied to travel and accommodation services and the appeals -and rulings- that followed, stating that despite the term BOOKING being generic, BOOKING.COM would be registrable since it had acquired secondary meaning; all of which has landed the case at Supreme Court.

There have been multiple questions asked in connection with this case: Does combining two generic terms result in a registrable trademark? Does adding .com to an otherwise generic term make it descriptive, and therefore subject to the secondary meaning doctrine? Are surveys showing consumer perception of an otherwise generic term, as a brand, enough to deem it registrable? Do pre-existing registrations such as STAPLES.COM or HOTELS.COM justify the registration of BOOKING.COM?

For over a century, secondary meaning has been a key element of the American trademarks system, its basic premise being to allow for the registration of a proposed trademark that is not inherently distinctive, where the applicant has produced evidence of acquired distinctiveness, in connection with the applicant’s goods and/or services. In the United States, the secondary meaning doctrine is only applicable where the proposed trademark is descriptive, and not to generic terms.

In the case of Latin American jurisdictions, with a first-to-file system in place, secondary meaning is still relatively new and, in some cases, inexistent:

• In Uruguay, secondary meaning was introduced in its Trademarks Law (Ley 17.011) during 1998, whose article 8 provides for the registration of generic, descriptive and common-use terms where they have acquired “proved distinctive force” in connection to a good or service associated with a physical or legal person.

• In the Andean Community countries -Bolivia, Colombia, Ecuador and Peru- which work under a common set of industrial property regulations, secondary meaning was introduced in 2000, with Decision 486 of the Andean Community Commission. Its scope goes beyond descriptive marks and is also applicable to other marks not inherently distinctive, generic and common-use terms, as well as colors.

• In Chile, secondary meaning was introduced via reform of its Industrial Property Law in 2005, whose article 19 prescribes that signs not inherently distinctive can be registered if they have acquired distinctiveness, through use.

• In Mexico, secondary meaning was fully introduced by way of the 2018 reform of its Industrial Property Law, whose article 90 prescribes the possibility of registering marks not inherently distinctive, when they have acquired distinctiveness regarding goods or services, as a result of use.

• In Argentina, Decree 242/2019 introduced secondary meaning associated with colors where they have acquired distinctiveness, and there has been caselaw from 2010, based on article 15.1 of the TRIPS Agreement, holding that marks not inherently distinctive could be registered provided they had acquired distinctiveness through use and consumer perception.

• In Brazil and Costa Rica, although there are no legal provisions for secondary meaning, there is caselaw where courts have found marks not inherently distinctive to have acquired distinctiveness and thus become registrable.

• In other countries, such as Venezuela, secondary meaning is still inexistent.

Whether BOOKING.COM will be granted in the United States or not, and how the Supreme Court will address the case and the questions it poses, is still to be determined. It is still interesting, though, that such questions do not seem to have been relevant in most Latin American jurisdictions mentioned, where the subject mark has been successfully registered.