Everything is a matter of position … and the rights of Paraguay extend to Colombia
The Superintendence of Industry and Commerce, through Resolution No. 64357 of 2018, declared founded the opposition filed in Colombia by our client PRESTIGE ZONA LIBRO CORP, based on the provisions of the General Inter-American Convention on Trademark and Commercial Protection ( Washington, 1929) and its trademark LONG BEACH POLO CLUB registered in the Republic of Paraguay to cover products of international class 25, and consequently, denied the trademark registration BEVERLY HILLS POLO CLUB (Mixed) for products of international class 25 . Again, the Trademark Office based on the international treaty, protects a trademark registered in one of the contracting countries, such as Paraguay, without having any registration in Colombia.
For the Superintendence of Industry and Commerce, once the comparison of the signs was made, it was clear that in addition to reproducing the expression “POLO CLUB” the requested mark reproduced the graphic element of its antecedent consisting of a rider (with helmet, cue and in the same position to hit the ball) that is practicing polo on a horse in motion. Therefore, being both signs so similar, could hardly be differentiated in the market by the consumer.
Thus, the registration authority concluded that when it comes to making a comparison between two signs to analyze the registrability of one of these, position and posture also count.