When carrying out the registrability examination of a trademark applied for registration, the examiner carries out an ex officio search on trademark history and precedents that may be infringed by the registration of the requested trademark. On several occasions it can happen that similar and confusing trademark antecedents are found. However, said trademark precedents may belong to a company that is part of the same business group as the applicant. However, in Colombia it is possible to overcome this scenario.
In the case at hand, the trademark MICROPEL of the client TROY TECHNOLOGY II, INC., was denied in the first instance based on the tradmearks MICROPEL and MICROPEL ANTIMICROBIAL PROTECTION, owned by TROY CORPORATON. In this case our client TROY TECHNOLOGY II, INC. and the company TROY CORPORATION belong to the same business group since: i) they have a subordinate relationship; ii) have unity of purpose; and (iii) they share an administration and control unit.
By demonstrating the above on appeal, the examiner agreed that the trademark precedents did not represent a barrier to registration and, consequently, granted the registration of our client’s trademark.
If your company is facing a similar situation and you want to know how to overcome it, do not hesitate to contact us at tum@tumnet.com to evaluate the trademark situation of your company and your needs.