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Barreda Moller writes...

Misleading marks: Analysis of the mark as a whole

Article 150 of Decision 486 establishes the Authority’s obligation of performing the registrability examination of a mark applied for registration.

Thus, in the registrability examination, with special attention to the analysis of the absolute prohibitions, the Administrative Authority must proceed to evaluate the mark as a whole, in order to determine if the same, when appreciated by the public in general, can identify a certain business origin without the risk of misleading the referred public.

Now then, with respect to the analysis of the prohibition of registration of misleading marks, the analysis of the mark as a whole acquires more relevance, since the conjunction of its elements will determine the possibility that consumers be led to error with respect to the characteristics of the offered products and/or services bearing the referred mark.

Recently, the Court Specialized in Intellectual Property has issued a resolution highlighting this analysis with respect to all the elements comprised in a mark as a whole.  In effect, through Resolution No. 17-2018/TPI-INDECOPI, the Court has denied the registration of the composite mark OT WHISKY OLD TIMES and label, considering that from the review of its elements –specifically the word WHISKY and the phrase MALTA ESCOCESA in smaller size lettering– it is concluded that the referred mark will produce risk of deceit with respect to the products of class 33 (alcoholic drinks, except beers) which the mark intends to distinguish.

In the concrete case, the registration of a label was applied for, containing the words OT WHISKY OLD TIMES and under said elements, in smaller size characters –for informative purposes as stated by the applicant–, the phrase “WHISKY OLD TIMES DE ENFÁTICO SABOR A MALTA ESCOCESA CON FINOS Y SELECTOS DESTILADOS OTORGAN UN BALANCE PERFECTO DE AROMAS CON UN EXCELENTE Y SUAVE FINAL.”  With respect to the mentioned phrase, the Authority considered that even through the same is informative “said situation does not necessarily determine that it must be excluded from the corresponding examination but only that exclusive rights in said elements cannot be invoked if the mark is granted.”

Taking into consideration what is stated in the preceding paragraph, the Court proceeded to evaluate the mark as a whole, stating that the concurrence of the words WHISKY and MALTA ESCOCESA will give to understand that the product which is intended to be distinguished comes from Scotland, even when it does not.

In this particular case, it is pertinent to highlight this new approach of the Court with respect to the registration prohibition of misleading marks, since the Court does not limit to the relevant elements but it assess, in a correct way, all the elements that will be appreciated by consumers when making their decision to purchase, even when said elements have not been claimed by the applicant or may lack distinctiveness.

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