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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 [2023]: mark MAR DE JUAN FERNÁNDEZ, TDPI N°001824-2023

Date of Judgment: November 29, 2023

Issuing Body: Industrial Property Court – Chile

Level of Issuing Body: First Instance

Type of Proceeding: Judicial (Administrative)

Subject Matter: Trademarks

Plaintiff: Pesquera Karin Ulloa Rivera EIRL

Defendant: National Institute of Industrial Property (INAPI)

Keywords: Generic trademarks, Distinctiveness of trademark, Designation of origin, Geographical Indications, Likelihood of confusion

Basic Facts: Pesquera Karin Ulloa Rivera EIRL (the plaintiff) applied to register the below trademark:

The trademark sought protection for certain products in Class 29 of the Nice Classification, which includes mainly foodstuffs of animal origin, as well as vegetables and other horticultural comestible products prepared or preserved for consumption.

The National Industrial Property Institute (INAPI), acting as first instance tribunal, refused to register the trademark on the grounds that it was descriptive and lacked distinctiveness.

Additionally, INAPI noted that the trademark could mislead or confuse the public regarding the origin or attributes of the product. Upon review, INAPI found that the trademark’s structure and configuration could easily be confused with the Geographical Indication “CANGREJO DORADO DE JUAN FERNÁNDEZ” (Registration No. 1002898), which is protected for non-living crab products in Class 29 of the Nice Classification.

Pesquera Karin Ulloa Rivera EIRL appealed the decision to the Industrial Property Court.

Judgment: The Industrial Property Court, the second instance court, overturned INAPI’s decision regarding the likelihood of confusion; however, it upheld the rejection of registering the trademark application due to its similarity to the name of a protected marine area.

Relevant holdings in relation to the strength of trademarks: The Industrial Property Court found that the expression “CANGREJO DORADO”, which pertains to the protected product, was not present in the trademark application “MAR DE JUAN FERNÁNDEZ”. As a result, the court reversed the decision on the likelihood of confusion between the applied trademark and the registered geographical indication.

However, the court upheld the refusal to grant protection to the applied trademark, as the term in question corresponded to the name of a protected marine area in the Juan Fernández archipelago.

Relevant Legislation:

·       Law No. 19.039 on Industrial Property