New criterion adopted by the trademark office applicable to cases of “partial duplicity” of applications for trademark registration

Published byBarreda Moller

In a previous issue, we gave an account of a criterion of recent application by the Trademark Office, according to which, when an application for trademark registration duplicated only partially a preexisting trademark registration -in the same class, in the name of the same owner- in the sense of comprising some (and not all) of the same goods/services, the application for trademark registration was declared inadmissible in the part that “duplicated” the goods/services protected by the preexisting registration, while the registration was granted for the remaining goods/services.

A recent decision issued by the Administrative Court reveals the different stance of this Court in connection with the granting of trademark registrations with partial coverage in cases as in the aforementioned, which has resulted in the reconsideration of the issue by the Trademark Office.

In short, the Administrative Court rejects the granting of trademark registrations with partial coverages, different to those petitioned by the applicant.

In the Court’s opinion, “[…] there is no rule allowing the Authority to make a partial analysis of the sign, nor restricting or limiting ex officio the products or services to be distinguished […] (Decision No. 1872-2014/TPI-INDECOPI of July 9, 2014).

Accordingly, by means of decision No. 1872-2014/TPI-INDECOPI of July 9, 2014 de 2014, the Administrative Court declared null a decision issued by the Trademark Office which, declaring inadmissible part of an application for service mark registration (due to duplicity), granted registration for the remaining services. The Administrative Court ordered to remand the case to the Trademark Office, so that it performs a comprehensive registrability examination of the applied-for sign.

The criterion evidenced by the Administrative Court has meant a twist in the granting policy of registrations with partial coverages in cases of duplicity, now already ruled out by the Trademark Office.

Nevertheless, the abovementioned does not involve the absolute impossibility for the interested party to access registration with an application the original coverage of which partially duplicates the coverage of a sign of its property, which preexists in the register. In case an application is declared inadmissible by the Trademark Office due to duplicity, the interested party will have the prerogative of filing a motion for reconsideration based on the limitation of the coverage of its application, in order to remove the duplicated goods/services and preserve the remaining ones.