Divide and you shal not conquer

On this occasion, the Superintendence of Industry and Commerce denied the NQA LAKEGROUP trademark application of our client SANTIAGO ESGUERRA BORDA, deeming it confusingly similar to several previously registered trademarks that it cited ex officio. However, thanks to the efforts of our Intellectual Property Department, we managed to overturn this decision. In our appeal, we argued that the first-instance examiner improperly fragmented the nominative elements of our client’s trademark, determining that some of these elements were confusingly similar to other trademarks. This fragmentation ignored the fact that the expression “LAKE,” examined in isolation, was not an independent term within the trademark but a commonly used element by the cited trademarks, which did not generate a significant risk of confusion. Moreover, our client’s trademark had clear additional distinctive elements.

It is important to highlight that the analysis by the first-instance examiner was flawed because it focused on the individual components of the trademark instead of considering it as a whole. By isolating the word “LAKE,” the examiner failed to consider the complete context and the unique combination of elements that make up NQA LAKEGROUP. This methodology of analysis can lead to unfair and incorrect decisions, as was the case here. Our team effectively argued that a fair evaluation must consider the overall impression the trademark creates on the consumer, rather than breaking it down into separate parts.

The second-instance examiner accepted our arguments, recognizing that, when comparing the trademarks without breaking them down into their components, our client’s trademark contained sufficient conceptual and distinctive elements to be registered. This comprehensive view allowed for a more accurate understanding of the unique character of NQA LAKEGROUP and how it differs from the other cited trademarks. As a result, the first-instance decision was overturned, and the registration of the NQA LAKEGROUP trademark was granted.

At Triana, Uribe & Michelsen, we are committed to quality work and teamwork with our clients, who are our partners. We understand their needs and protect their interests through tailored service. We strive in each case to provide effective and personalized solutions. The reversal of the Superintendence of Industry and Commerce’s decision is an example of our dedication and ability to overcome complex legal challenges, ensuring the protection of our clients’ intellectual property rights.

This positive outcome reinforces our reputation as a leading law firm in the field of intellectual property and demonstrates our commitment to excellence and the effective defense of our clients’ interests. We take pride in our ability to meticulously analyze each case and present strong arguments that highlight the distinctive characteristics of the trademarks we represent.

In every challenge, we seek to turn obstacles into opportunities, ensuring that our clients receive the best service and the most favorable results possible. Our strategy is based on a deep understanding of the legal and regulatory framework, as well as close collaboration with our clients to fully understand their specific goals and needs. This allows us to develop innovative and effective approaches to protect their interests.

The favorable decision in the case of the NQA LAKEGROUP trademark not only represents a victory for our client but also a testament to our dedication and expertise in the field of intellectual property. We will continue to work diligently to defend our clients’ rights and provide them with high-quality advice and representation. At Triana, Uribe & Michelsen, we value the trust our clients place in us and are committed to maintaining the highest standards of professionalism and ethics in everything we do. Protecting intellectual property is crucial in today’s business environment, and we are here to ensure that our clients are properly protected and can thrive in their respective markets. The success story with NQA LAKEGROUP is just one more example of how our dedicated and detailed approach can make a significant difference for our clients.

Divide and you shal not conquer