The ‘stone’ particle was key in the decision to grant sign registration
Tradoc Blackstone Tires registered with the Superintendence of Industry and Commerce (SIC) at the request of Democratic Workers of the West to identify vehicles, land, air or water locomotion equipment and construction, repair and installation services.
Bridgestone Corporation objected to the registration request, arguing the possibility of consumer confusion over the use of the la Stone ’particle with the Bridgestone trademark. In addition to the orthographic similarity, Bridgestone Corporation claimed a meaning known in the word ‘Tradoc’ that they considered, made the Tradoc Blackstone Tires brand irregular.
Therefore, the Super Industry decided that there is a capacity for competition and coexistence between the registered trademarks, detailing it in this way “Although the opponent argues that the main impact falls on the expression Stone, this Directorate finds that the marks must be seen in as a whole and not in a fragmented way, and where visually the most relevant term of the requested sign and the one with the most impact and level of remembrance is Tradoc, so the coincidence in some letters that make up the Blackstone / Bridgestone expressions, is not enough to cause confusion in the consumer. "
EDUARDO CABRERA GORDILLOSOCIO DE SERGIO CABRERA ABOGADOS
"The SIC, when carrying out the comparative analysis of the signs in conflict, conducted the comparative study with success, taking into account that the particle" STONE "is generic and of common and inappropriate use of a single holder. In this case, the main name "TRADOC" is distinctive enough to distinguish products of class 12, so it was concluded that there is no risk of confusion between the confronted brands and it was determined that each of them can coexist in trade ".
When deciding on the nominative, graphic or phonetic essence of the application, it decides the necessary elements to analyze and the viability of competition in a given industry. Thus, before Bridgestone Corporation it did not continue with the protection previously granted by pre-existing registration.
In this case, he compared the syllables, positions and pronunciations to determine confrontation factors and analyze which element impacts with greater magnitude in differentiating function of the marks.
In addition to the consequences that are generated as a result of its decision, the favorable conditions necessary in any company to compete on equal terms, leaving aside the factors of origin, pre-existence, relevance and reputation that the opposing brand may present and that may become fundamental to resolve how much a similar sign register affects you if your reputation in the market is known and the consumer would not easily relate the pre-existing sign to one that appears recently.