The Superindustry did not give notoriety to the Crayola brand considering that the evidence gathered for this purpose was not enough
In writing, filed on October 10, 2018, Cunitas y Crayolas requested the registration of the mixed brand Jardín Infantil y Salacuna, Cunitas and Crayons to distinguish services included in the Trademark and Distinctive Signs Directorate of the Superintendence of Industry and Commerce (SIC). Class 41 of the Nice International Classification (education, teaching and training).
The brand was not granted then, according to what was published in the Gazette of Industrial Property No. 844, Crayola Properties, INC. filed opposition based on subparagraphs a) and h) of Article 136 and Article 137 of Decision 486 of the Commission of the Andean Community.
"As can be seen, and will be shown below, my representative has a family of brands around the term and Crayola brand, which is well known (...)," said the legal representation of the company Crayola Properties.
"The main element of the mixed sign requested under the name 'Children's Garden and Salacuna, Cunitas and Crayons' is only the word Crayolas, since, the other elements are merely descriptive of the services that will be identified with the requested mark", assured the legal team hired by the company Crayola to defend its sign in the lawsuit filed before the Superintendence of Industry and Commerce (SIC).
On the other hand, the kindergarten, Cunitas and Crayons did not pronounce on the opposition of the multinational producer of crayons and crayons. In order to decide on the request for trademark registration of the reference, the Directorate of Distinctive Signs of the SIC proceeded to carry out an examination of registrability taking into account all the arguments raised, as well as the evidence presented by the plaintiffs.
In this sense, it was also stipulated in Resolution No. 20412 that "within the term granted for that purpose, Cunitas and Crayolas, did not respond to the opposition filed."
According to the norm of the Andean Community "trademarks whose use in commerce will unduly affect a third party right, in particular when they are identical or similar to a trademark previously requested for registration or registered by a third party, may not be registered as trademarks. , for the same products or services, or for products or services in respect of which the use of the brand may cause a risk of confusion or association ".
The registration expert, Édgar Iván León Robayo, gave his opinion regarding the ruling made by the SIC in this trademark lawsuit.
"Most likely, when designing the brand the applicant believed that he could use the expression crayon as part of his sign, given his common school use. However, although it is a generalized term, this expression has sufficiently strong trademark protection that allows it to protect the sign of any type of interference to its owner, by any third party, "said the lawyer.
The Superindustry did not give notoriety to the Crayola brand, considering that the evidence gathered for this purpose was not enough.