Traditionally, the trademark Authority has established that the indirect confusion between two signs is determined by the coincidence of one of their elements –provided the coincident element is distinctive and does not form part of third parties’ trademarks in the class- this because the public (consumer and/or user) could be led to believe that although it is not the same product or service, the new sign would be referred to a new version of the registered sign or that there would be some type of business relationship between their owners.
Nevertheless, since the comparative examination between two signs must be performed taking into account the particular case, said criterion has considered an exception with regard to the comparison of signs that share a first name or last name, since in these cases the standard analysis criterion of indirect confusion cases must not be applied.
In this sense, the Administrative Court has determined the inexistence of confusion between two signs for the mere fact of sharing a first name or last name, by virtue of the conceptual differences arising from their comparison. It is worth mentioning that said criterion was not explicitly established at first, but it was progressively formed on the basis of various decisions issued by the trademark Authority.
In fact, one of the first outlines of the aforementioned criterion is noticed in Decision N° 2566-2012/TPI-INDECOPI (Case SER BY VANESSA TELLO and logotype). In said case, the applied-for sign SER BY VANESSA TELLO and logotype was denied by the Trademark Office, as it was considered easily confused with trademark V VANESSA and logotype.
Nevertheless, the Administrative Court considered that the expression BY VANESSA TELLO, which appeared at the lower part and written in less highlighted letters, was used to make reference to the name of the designer (or the company), so it should be considered a complement and not be taken into consideration when performing the comparative analysis, thereby granting the registration of the applied-for sign. It is worth mentioning that the trademark registration was granted claiming all its elements.
The Administrative Court has subsequently reinforced the cited criterion, expressing that the presence of names, particularly those corresponding to famous persons or characters, allow properly indicating a business source. Thus, the Court has determined the inexistence of confusion between two signs, even if they share an element, when they are names of well-known persons or characters. It is important to indicate that said analysis has been set out at the time of noticing the inexistence of confusion from a conceptual point of view.
In this way, the Administrative Court, by means of Decisions N° 2868-2014/TPI-INDECOPI (Case JAMES CAMERON’S AVATAR) and N° 420-2015/TPI-INDECOPI (Case ANN TAYLOR), determined the inexistence of confusion between the applied-for signs, which had been denied by the Trademark Office, as they had been considered easily confused with trademarks HOME JAMES and ELIZABETH TAYLOR, respectively. In said decisions, the Court stated that the fact that the signs in dispute shared the denominations JAMES or TAYLOR did not determine the existence of risk of consumer confusion, since the consumer recognized the identity of JAMES CAMERON and of ELIZABETH TAYLOR.