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“NOEL” beats “Noah” in Colombian Trademark Dispute

November 4, 2010

Posted By Rodrigo Ramírez Herrera to IP tango on 11/04/2010 09:39:00

Translation by Hunter Carter

A trademark dispute about cookies in Colombia has been resolved by a ruling that holds that in considering a generic phrase to assess the risk of confusion between conflicting marks, only the dominant distinctive elements should be considered.

The mark Condimentos Noe Puro (“Pure Spices Noe”) was recorded in the SIC (Superintendency of Industry and Commerce of Colombia), by Resolution No. 1229406, 2003, dismissed as unfounded the opposition to the registration filed by Galletas Noel SA.  The Superintendent in charge of keeping records based its decision on the “overall impression of ‘Noe’ and ‘Noel,’ no similarities are seen directly or indirectly that generate confusion” since the former term refers a biblical character [Noah] who is easy to remember and would not confuse the consumer with Noel, a term used to identify Papa Noel (Santa Clause). The graphic version of the mark applied for includes a boat and each candle represents a letter of the word Noe “Noah” – which is sufficient to distinguish the two products.

However Galletas Noel SA took the matter to the Council of State by an Action for Annulment and Re-establishment of law brought against the decisions of the SIC No. 2294 of April 30, 2003, 021981 of July 2003 and 022992 of August 25, 2003, by which the trademark “NOE PURO” was registered.  Galletas Noel argued that it violated Article 61 of the Constitution, which provides that the state must protect the right of a trademark holder, and further argued that the term “condimentos” (spices) is generic for cloves and cinnamon, and “Pure” refers to a quality of the products of Class 30 of the Gazetteer of Nice: coffee, tea, cocoa, sugar, rice, tapioca, sago , coffee substitutes, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, molasses, yeast, baking powder, salt, mustard, vinegar, sauces (condiments), spices, ice, and this general quality requires that “Noah” be compared directly with “Noel Noe.”

The Council of State, in process number 11001032400020040004401, determined that the two marks “Noe Seasonings Pure” and “Noel” cover goods in Class 30 of the Gazetteer of Nice, invoking the first requirement for non-registrability referred to in Article 136 paragraph (a) of Decision 486 of the Andean Community on a Common Regime for Intellectual Property (of which Colombia is a party), referring to “the identity or relationship between the products that claim to be protected by the mark.

In addition and consistent with the preliminary interpretation of the Court of Justice of the Andean Community in this case (Proceso19-IP-2009), at the request of the State Council, it was determined that comparing the marks, the court must identify what is the predominant element — if the word or graphic – determine likelihood of confusion. So, words of common usage, generic, or descriptive belong in the public domain and should not belong to a trademark holder and be put outside of general use. This interpretation was used by the State Council to rule that the terms “Seasonings” and “Pure” are generic, and therefore to make the “comparison between the signs” are not to be taken into account, leaving only the comparison between the words “Noe” (Noah) and “Noel.”

On this background, the Council of State found that the conflicting marks are similar from a phonetic, graphic, visual, and auditory spelling points of view.  The only difference is that “Noel” ends with the knife “L,” which gives little difference in the marks.

Finally, the Council of State determined that while the term “Noah” is a name of a biblical character and “Noel” is a word commonly used to evoke Christmas, “the similarities between the signs are crucial to generate a risk of confusion, because they are also the same international class 30, so that consumers can easily confuse this, the origin and quality of products and also affect the right of who was the owner of a brand. “Therefore, it was decided to cancel the resolutions of the SIC to consider the marks  “cannot peacefully coexist in the market” and create a likelihood of confusion of the public consumer, and ordered the revocation of registration.

Posted By Rodrigo Ramírez Herrera to IP tango on 11/04/2010 09:39:00

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