The Colombian Council of State has ruled on the trademark dispute arising between the sign BANANA BAY and the trademark and trade emblem JOE BANANA and established that collation should be performed over the expression BAY and JOE while excluding the expression BANANA from such examination as it is held to be commonly used and consequently not subject to any exclusive use. The Council of State decided to affirm registration of mark BANANA BAY as it found the same did not fall under the causes for unregistrability in Articles 134, 135 and 136 of Decision 486 of 2000 of the Andean Community.
In sentence number 11001-03-24-000-2008-00068-00 of May 05, 2016, the Council of State ruled on the trademark dispute between the nominative signs BANANA BAY and JOE BANANA in deciding the Nullity and Reinstatement of Right action filed by Mr. Hécto Humberto Cáceres Mora as he held that no registration should be afforded to sign BANANA BAY given the similarity exhibited by it and his previously registered mark JOE BANANA.
In this regard, the Higher Court examined the aspects to be considered for establishing the presence or not of any unregistrability causes to be pondered according to the statements made by the Andean Court of Justice for each specific case. The Council of State highlighted that the marks subject matter of examination are nominative as their structure is comprised of a combination of letters and/or alphabetical symbols. The examination was conducted in connection with orthographical, phonetic and ideological similarities of the expressions BAY and JOE while omitting examination of the word BANANA, as it is held to be of common use and this constitutes one of the registrability exceptions that Court of Justice of the Andean Community has established under its interpretation 314-IP-2014: “The exclusivity of use conferred by the right stemming from any mark registration excludes that commonly used words belonging to the public domain may be used solely by the mark owner insofar as these being customary words the public at large may not be prevented from continue using the same as doing so would establish a monopoly in the use of necessary words for the benefit of a few individuals.”
In light of the above, the Council of State has decided to grant registration to the mark BANANA BAY, while stating the BANANA is a commonly used expression due to the frequent use of the same in Class 25 of the International Nice Classification (clothing, footwear and headgear). It further added that due to the employ of a commonly used expression, the mark is inherently weak as to protection of the same. Additionally, the collation should be performed over the sign accompanying the weak (commonly used ) word, as it is not a differentiable characteristic between the signs under registration due to the exception provided by the International Higher Court in connection with the impossibility for the same to be exclusively used.
Accordingly, it is especially important for anyone intending to establish a mark as a distinctive sign of their company or business to take into account the inherent weakness of the same as the less such mark is likely to be weak, the more it will be protected and consequently enjoy a greater facility to be positioned in the market it shares, thus precluding from the start any risk of confusion or likelihood of having to coexist with another mark, which would entail increased competition, loss of investment in positioning the mark and presence of continual trademark litigations with a large loss margin.
