Specialty principle and the delimitation of products and services: a trademark strategy


On this occasion, the registration of the trademark STRATUM RESERVOIR (+ GRAPHIC) requested by our client STRATUM RESERVOIR (US), LLC was denied by the Trademarks Director on the basis of the risk of confusion between the products and services identified by the requested sign and a previously registered trademark STRATUS.

In response to the above, our client limited the product and service coverage protected by the denied trademark and subsequently appealed the decision on the basis of the specialty principle.

The aforementioned principle states that when granted, a trademark protects the products and services for which it was registered, thus, similar or identical trademarks may coexist in the market so long as they protect and refer to different products and services, eliminating any risk of confusion among the signs when considered by consumers.

Accordingly, due to the modification and limitation of products and services identified by our client´s trademark, the Superintendent determined that the conflicted signs STRATUM RESERVOIR (+ GRAPHIC) and STRATUS do not pose a risk of confusion due to the protection of differentiated products and services: oilfield laboratory services on the former and products such as computers and information processing equipment on the latter.

Consequently, the decision that denied the registration of our client´s trademark was revoked, allowing for the protection and registry of their trademark.

If you seek protection for your trademarks and intangible property, contact us at our email: tum@tumnet.com