Evidence of peaceful trademark coexistence in the market is not enough to show lack of likelihood of confusion in the Andean Community
Author: J. Ian Raisbeck.
Once again, the Andean Community Justice Tribunal (ACJT) reminds us of its position with respect to peaceful trademark coexistence in the market as evidence of lack of likelihood of confusion between them. In a nutshell, evidence of peaceful coexistence between two trademarks in the marketplace alone is not enough to eliminate likelihood of confusion as a basis for rejection of a trademark application.
The ACJT issued Prejudicial Interpretation 65-IP-2019 on November 19, 2019, as part of an Annulment Action filed before the Colombian Council of State by plaintiff Behr Process Corporation against the Superintendence of Industry and Commerce (where the Colombian Trademark Office lies), seeking to Annul the Resolutions which rejected the trademark “BEHR PREMIUM PLUS CON ESTILO & DESIGN” in Class 2.
In the aforementioned Prejudicial Interpretation, the ACJT first indicates that peaceful trademark coexistence refers to the fact that the signs in conflict (identical or similar signs identifying identical or similar products or services) have been present in the market for a prolonged period of time without problems of confusion between them arising, indicating that the term “peaceful” refers to the fact that there is no legal conflict pending before any court with respect to likelihood of confusion or association between the marks in question.
The ACJT then goes to mention that the analysis over likelihood of confusion between marks is prospective, as it is intended not to establish actual events of confusion, but the future possibility of likelihood of confusion or association before consumers. However, peaceful trademark coexistence, although alone is not conclusive with respect to lack of likelihood of confusion or association, may be taken as an indication (indirect evidence) of the same in a retrospective analysis. As such, any person alleging peaceful trademark coexistence must provide additional evidence to support the lack of likelihood of confusion or association between the marks in question, such as “statistical analysis of differentiation in the consuming public and people participating in the distribution channels, or evidence demonstrating that they have shared effective publicity settings (specialized magazines, musical or sports events, among others), without risk of confusion being present.”
- The trademark coexistence must be peaceful, as defined above.
- Coexistence must be in the same geographic or virtual market.
- Coexistence must take place for a reasonable period of time to have an effective impact in the consumer, where “reasonable” will vary depending on the nature of the products or services (i.e., basic v.s. luxury products, or products available permanently v.s. seasonal products).
- Coexistence may not be present to perpetuate, facilitate or consolidate acts of unfair competition.
- Evidence of coexistence must be accompanied by other evidence which generate total conviction over the lack of likelihood of confusion or association.
As such, when arguing that there is no likelihood of confusion between marks because the marks in question have been peacefully coexisting in the market for a long period of time, be prepared to submit additional evidence that supports the consumer’s perception that the marks are indeed different and point to different and unassociated business origins (basic elements or likelihood of confusion and association).