On this occasion, the existence of the trademarks “PANTERA” registered by ARYSTA LIFESCIENCE INC and “BLACK PANTHER” registered by CENTRAL DE SOLDADURAS Y PROTECCIÓN INDUSTRIAL S.A presented a barrier for the registration of the trademark “PANTHER” requested by our client GEN-PROBE INCORPORATED. Therefore, a cancellation action was filed against the registered trademarks on the grounds of their lack of use. The cancellation action was successful in its entirety against the trademark “PANTERA” and partially against the trademark “BLACK PANTHER”, opening the way for the registration of our client´s sign.
Subsequently, on appeal, we achieved the registration and protection of our client´s brand by arguing that the requested sign “PANTHER” and the registered sign “BLACK PANTHER” were not competitively related, as they refer to different products and services.
The logic behind this argument is that, for a trademark registration to be denied, two requirements must be verified: i) that the requested sign is similar to previously registered signs and ii) that the compared signs are competitively relates, meaning that they refer to similar classes of products and services.
Consequently, as they are not competitively related in terms of products and services provided, our client´s sign was registered and protected.
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