The processed sign shared similar features with maxylash, a brand that the company Biotecnik S.A.S owns
Through a brief filed on July 23, 2018, the company Swiss Nature Labs S.A.S. requested the registration of the Lash Max Pro mixed brand to distinguish products included in class three of the International Nice Classification that includes cosmetics for eyelashes, gel for their growth, creams and lotions.
The requested sign was not granted by the Superintendence of Industry and Commerce, entity in charge of this type of procedures. The denial took place without taking into account the opposition presented by the company Biotecnik S.A.S for alleged similarities with the sign Maxylash, of which it is the owner.
In accordance with what was published in the Industrial Property Gazette No. 836, the company Biotecnik S.A.S, based on the grounds for non-registrability contained in subparagraph A of Article 136 of Decision 486 of the Commission of the Andean Community.
"The mixed brand Lash Max Pro class three whose registration is requested, is confused with the Maxylash brand of Lavanté Paris class three whose owner is my represented, a brand that was registered before, so the latter has a better right," he said. the legal representative of Biotecnik SAS, the lawyer Tito Noé Parra Murillo.
"It is evident and unquestionable the copy that the applicant of the mark of my agent intends to make, because as you can see, the applicant transcribes the letters of the trademarks registered previously by my represented, simply changing the arrangement of the letters causing this way that brands are confusing in the eyes of consumers, "continued the lawyer.
In accordance with the norm established by 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 trademark, may not be registered as trademarks. third, for the same products or services, in which the use of the brand may cause a risk of confusion or association ".
The expert, Édgar Iván León Robayo commented on the opposition of Biotecnik S.A.S: in order for an opposition to proceed, it is required to demonstrate and prove the existence of similarities that avoid the confusion of a consumer with respect to the products covered by a brand.
The lawyer added that such arguments must have a coincidence as regards the previously registered sign. For his part, Andrea Donato, manager at Consulting Group Marado, said that within a trademark registration application different parameters of the trademark should be taken into account. current regulations, because when a sign shares much of another registered before, this is not viable.