Reputation and conceptual content of signs in apparent conflict: an encouraging look
Published byMicaela Mujica
The Peruvian system of regulations in terms of trademarks, acknowledges a single category of reinforced protection for distinctive signs, namely, the notorious trademark. Adjectives such as “famous” and “reputed”, lack in principle, of greater meaning in the examination made by the Peruvian trademark authority, if the sign at issue is not, strictly speaking, notorious.
Considering the above-mentioned, it is worth taking into account that Peruvian Trademark Law, namely, Legislative Decree No. 1075 (which approves Complementary Provisions to Decision 486 of the Andean Community Commission which establishes the Common Regime on Industrial Property), establishes in Article 45 paragraph d) that, to establish if two signs are similar and capable of leading consumer to confusion, the reputation of the sign in the market[1] will be taken into consideration among other criteria.
Although this criterion is expressly regulated in our legislation, it does not find to date greater support in Peruvian case law, which in all cases embraces the reinforced protection exclusively for notorious trademarks.
Now then, the reputation of the distinctive sign acquires greater significance in the context of the conceptual aspect that can be recognized to the sign, in the framework of the comparative examination of two signs, wherein one is candidate for the registration and the other, preexists registered in the country in the same class.
As to the conceptual aspect, the local trademark Authority recognizes that said aspect results determining in the comparative analysis of two signs, in the line of what is stipulated by the Andean Court, since it establishes “If a sign or a designation have a conceptual content, this word represents for the consumer a possibility of fast memorization compared to other that lacks such content”[2]. Thence our Authorities repeatedly state that when the conceptual aspect of a sign is known by the generality of the Peruvian public, the conceptual criterion can have preferential application.
Bearing in mind that the Peruvian legislation considers that the reputation must be taken into consideration as criterion to determine the similarity between two signs, and moreover that, the conceptual aspect must have preeminence with respect to other aspects (graphic / phonetic) in the comparative examination of two signs, the winning formula seems to run to signs that have won reputation in the market (for example, in the entertainment industry), and by such virtue, it is interpreted that they have gained a conceptual content. Examples of these signs can be the name of characters of cinematographic and/or television productions.
Brought the foregoing down to practice (case law), it turns out that the second non-contentious administrative instance, reversing a resolution issued by the first instance (Head Office of Distinctive Signs), has established that the sign HULK (applied for registration) is not mistakable for the sign HÜL (previously registered by a third party) since HULK “transmits the idea of a superhero of green skin with an extraordinary physical force, the same that is usually proportional to his degree of anger, whereas the denomination HÜL (registered trademark) does not transmit a particular concept, so it will be perceived as a fantasy sign”[3] and, consequently, has granted registration to the applied-for sign.
Micaela Mujica