20 Jul CANCELLATION ACTION AGAINST TRADEMARK CROSSFIT IN CHILE
By Rodrigo Sammut
In 2011, a Chilean citizen, Cristian Ciudad Cueto, applied for the trademark CROSSFIT and registered it, for Class 41 (organization of sport events). Said person passed a certification from CROSSFIT, Inc. in order to teach this sport method in Chile. However, he applied for the trademark without any authorization from the US company.
As a consequence, Crossfit Inc. contacted the owner of the Chilean trademark to inform him of the trademark infringement and requested him to transfer the trademark, but without success.
In parallel, Crossfit Inc. registered in Chile the trademark CROSSFIT, in class 25 (clothing, footwear, headgear) and 28 (exercise equipment, exercise machines and weights to exercise), with no major objection thanks to the principle of specialty, which allows the coexistence of identical marks for different activities, with certain exceptions.
Since the assignment of the trademark CROSSFIT in class 41 could not be obtained with a friendly settlement, in early 2015, the US company filed a cancellation action against the registration of Mr. Cristian Ciudad, in order to have protected the CROSSFIT mark for Class 41 (organization of sports events).
This situation is common when a brand becomes quickly known regionally or globally and third parties in bad faith attempt to take advantage of another’s trade mark. The principle of territoriality, meaning that the protection of trademarks is limited to the country where it is registered, implies that registration procedures have to be made in each countries, increasing this type of situation in bad faith.
In addition, you should prevent distributors, importers and other third parties related to the owner of a trademark such as CROSSFIT from applying for a trademark in their respective countries. Otherwise, we would be diluting control over our brand, which could be harmful to our corporate image and our goods and services.
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