CHILE – OPPOSITION BASED ON FOREIGN TRADEMARK
Andes IP, thanks to its lawyer Andrea Lobos, has successfully defended the French company WONDERBOX SAS, owner of the famous trademark WONDERBOX, against a trademark application in Chile, WONDERBOX, in class 35.
The opposition was filed based on Article 20, letter g) of the Industrial Property Law. This article allows the filing of an opposition based on a trademark registered abroad (not registered in Chile), as long as it is proven to be famous and well known in the opponent’s country of origin.
In first instance, the Chilean Trademark Office stated that the conditions established in Article 20, letter g), were fulfilled and WONDERBOX is a notorious trademark, based on the evidences provided before the examiner. Therefore, the Chilean Trademark Office decided to reject the conflicting trademark application.
The applicant decided to appeal this decision before the Industrial Property Court. Surprisingly, in second instance, the judges considered the earlier foreign trademark was not a valid right to oppose and the circumstances to reject the conflictive trademark did not exist, in spite of a voluminous evidence of more than 300 pages.
The owner of the notorious trademark WONDERBOX, represented by Andes IP, filed an appeal with the Supreme Court, the last judicial instance in Chile, who must indicate whether there was an error of law, in the application of Article 20, letter g).
In its ruling of Case No. 28.040-17, dated October 11, 2017, the judges considered, without any dissenting opinion, that the opponent demonstrated its trademark is notorious in its country of origin and it is a valid right to file this opposition. Therefore, the judges of second instance “have incurred in an erroneous application of the legal provision, upon concluding the contrary and admitting to registration the requested mark, reason why the second instance ruling must be annulled“.
This decision is important as it highlights the conditions of application of Article 20, letter g) of the Industrial Property Law.
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