The Colombian Council of State upheld our client’s industrial property rights by rejecting the nullity action against the decision made by the Superintendence of Industry and Commerce. This decision had denied the registration of the trademark “EDUCACIÓN RELACIONAL FONTAN” due to its confusing similarity with the registered trademark “SISTEMA FONTAN + GRAPHIC” and the trade names “COLEGIO FONTAN LTDA” and “COLEGIO FONTAN,” which also use the expression “FONTAN.”
The High Court stated that trademarks that include proper names require additional elements to distinguish them from other registered trademarks. This differentiation is not possible if they use generic or common terms, especially if the additional elements are directly related to the products and services covered by existing trademarks or are associated with them.
The claimant also argued in support of its petition to register the trademark based on the previous, permanent, and public use of the trade name JULIO FONTAN S.A.S.
However, the Council of State pointed out that the trade name is only authorized to be used as a basis for opposition, not as a foundation for a trademark application. The existence of the trade name right does not automatically grant eligibility for trademark registration. It is essential for the trademark to meet all legal requirements.
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