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This is an informal case summary prepared for the purposes of facilitating exchange during the 2024 WIPO IP Judges Forum.

Session 4

Industrial Property Court of Chile [2022]: mark SUPERPAN, TDPI N°001428-2022

Date of Judgment: November 23, 2022

Issuing Body: Industrial Property Court – Chile

Level of Issuing Body: First Instance

Type of Proceeding: Judicial (Administrative)

Subject Matter: Trademarks

Plaintiff: Domingo Castaño González (DC COMICS); Rodrigo Yanquez Olea (Agrosuper S.A.)

Defendant: Gonzalo Montenegro Olate

Keywords: Generic trademark, Lack of distinctiveness, Evocation of trademark

Basic Facts: Gonzalo Montenegro Olate (the defendant) sought to register a trademark “SUPERPAN” for goods in Class 30 of the Nice Classification, i.e., bread, cakes, and cookies.

An opposition claim was filed by DC COMICS, with Agrosuper S.A. (the plaintiffs) joining the action. The opposition was based on the following earlier trademarks: “SUPERMAN”, “AGROSUPER ALIMENTA”, “SUPER POLLO”, and “SUPER CERDO”.

The National Industrial Property Institute (INAPI), acting as first instance tribunal, upheld opposition claims on the grounds that the requested sign is a descriptive term for the coverage it aims to distinguish, leading to error and deception by implying that the requested coverage only relates to bread, while protection is also sought for products other than bread.

Gonzalo Montenegro Olate appealed the first instance ruling to the Industrial Property Court.

Held: The Industrial Property Court, the second instance court, overturned the first instance ruling and granted protection to the trademark, without protection for its individual elements.

Relevant holdings in relation to the strength of trademarks: The Industrial Property Court concluded that the term “super bread” would not be understood by the average consumer as a product possessing superior qualities. Instead, it would be seen as a suggestive or evocative term.

The court considered evidence presented during the proceedings that demonstrated prior use of the “SUPERPAN” trademark, further substantiating its distinctiveness and market presence. This evidence strengthened the case for the trademark's registrability, as it had already established a recognizable identity within the market, indicating that it was more than merely descriptive and capable of functioning as a trademark.

Moreover, the court found that the previously registered trademarks “SUPERMAN”, “AGROSUPER ALIMENTA”, “SUPER POLLO”, and “SUPER CERDO”, despite containing the word “super,” were not sufficiently similar to the trademark in question. The Court, therefore, concluded that the coexistence of these trademarks in the market would not cause confusion, error, or deception for the average consumer.

The trademark was granted registration, without separate protection for its individual elements.

Relevant Legislation:

·         Law No. 19.039 on Industrial Property