The opposition filed by Mark Usa was declared unfounded by the entity because the brand they claimed had previously been denied
Despite the opposition presented by the company Mark USA, the Mexican chain of stores Oxxo successfully registered in Colombia its brand to distinguish food products such as meats, coffees, beers, among others, during the next ten years.
While Grupo Industrial Emprex S.A. from C.V. sought to register the Oxxo brand to identify this type of products in the local market, the company Mark Usa opposed considering that it would be confused with its previous Oxxo sign, which supposedly identified clothing products and other services. However, the SIC later assured that such registration did not exist and, therefore, granted the registration to the Mexican.
Specifically, the company indicated that the requested sign Oxxo (mixed) was identical and confusing with its previous registration due to the completely identical grammatical, visual and phonetic structure.
Therefore, for the Mark USA company to grant the registration would undoubtedly result in a risk of confusion and association in the consumer public that could mistakenly think that the two brands belonged to the same business origin.
Likewise, the company indicated that the opposing signs share all the letters that make up the Oxxo expression, so it would also generate an identical visual impact that makes it impossible for the public to differentiate the products that each identifies.
For its part, the Emprex Industrial Group defended the registry on the grounds that the Oxxo sign of its property has the notorious recognition conferred by the Directorate of Distinctive Signs and that, for this same reason, the SIC would have denied the request in 2018 of Oxxo that alleges the company Mark USA.
Therefore, the Superintendency decided to grant the registration of the Oxxo brand due to the lack of foundation on the part of the opposition. "The foundation brand of the Oxxo (mixed) opposition for class 37, identified with the file was denied on December 13, 2018," the agency recalled.
In this way, the SIC defined that the resolution of this date provides sufficient reason for the disappearance of the assumptions of fact “necessary to carry out the comparative study between the confronted brands, since it will no longer originate between these confusion of any kind”.
In this way, the agency prevented a previously denied brand from substantiating its opposition to avoid registering the Mexican chain Oxxo. Although the identity is clear, this resolution specified that the applicant company is the one that enjoys notoriety and the opposition did not have sufficient arguments to allege reasons of irregularity.
Finally, it was defined that there is not sufficient cause not to grant the registration, nor any impediment to not proceed with the decision that allows the notorious brand to identify products of other international classes Nice.