An analytical criteria or a formal one? A new perspective by The Supreme Court of Justice in Paraguay
It is a long-established principle in Intellectual Property law that the application for registration of a trademark that is identical, or very similar, whether phonetically, graphically or conceptually, to a pre-existing trademark cannot prosper, except when the trademark is applied for registration in a class in which the products are so different to those protected by the pre-existing trademark that no risk of association or confusion could derive from the co-existence of both trademarks in the same country or territory. This principle has been established by the Paris Convention for the Protection of Intellectual Property and has been included in the current Paraguayan Trademark Legislation. It also seems as if this principle has been recognized by the Supreme Court of Justice in Paraguay, as we may deduce from a recent resolution.
COPALSA, a Paraguayan company whose main line of business is the manufacture of food products, such as bakery products, among others, applied for the registration of the trademark LEVAPAN in Class 01; LEVAPAN S.A., a Colombian firm whose principal activity is also the manufacture of food products, lodged an opposition against the said trademark on the basis of its registration for the trademark “LEVAPAN” in Class 29; LEVAPAN S.A. won in the two administrative stages; however the Court of Appeals in Paraguay overturned the previous resolutions on the grounds that the applied-for trademark reunited the essential requirements for registration and that no risk of confusion between trademarks could derive from its registration, as it protected different products in different classes.
The Supreme Court of Justice, on the other hand, reversed this decision on the grounds that, despite the fact that the doctrine in general, sustains a “formal criteria”, that sets forth that when the products are in different classes they are by no means similar, consequently, the risk of confusion is impossible; in that specific case, they were before particular circumstances that called for an analytical criteria rather than a formal one. There was an important connection point between the products protected by one trademark and the ones protected by the other trademark; this point of connection opened the possibility for creating a risk of confusion between the consumers and, considering that the main objective of the Paraguayan legislation is to protect the consumer, the trademark application had be rejected.
This decision is extremely important – a landmark decision, no less – as the Supreme Court of Justice in Paraguay has finally broadened its analysis when determining the registrability of a trademark to not only include the similarity between the international classes and the products in each of such classes, but to also take into consideration the consumers and their reaction when acquiring the different products protected by trademarks.
In contrast to previous resolutions – which were constrained to the “formal criteria” as explained above – this Resolution finally settles that the main objectives of our law system are the consumers; and that a risk of confusion should be avoided, by all means.