Jurisprudence on the registration of generic, evocative and descriptive trademarks

By Rodrigo Aguirre

Case: COLGATE PALMOLIVE COMPANY against Administrative decision 255 of June 18, 2004 of the Intellectual Property Office. 

Earlier this year (2011) the Supreme Court of Justice of Paraguay rendered a decision in the referenced case revoking the Exchequer Court’s ruling which sustained the lawsuit filed by COLGATE PALMOLIVE COMPANY against the Intellectual Property Office.

COLGATE PALMOLIVE COMPANY applied for trademark “ESTIMULA TUS SENTIDOS” (Stimulate Your Senses) to distinguish products in class 3. The Intellectual Property Office (administrative instance) in Paraguay rejected the trademark application arguing that the tm was generic and a clear description of the product it pretended to cover. Thus, according to the administrative authorities to allow this tm application would be a violation to the Paraguayan Trademark Law.

The administrative decision to reject the trademark by COLGATE PALMOLIVE COMPANY was appealed before the Exchequer Court. The Exchequer Court decided to revoke the administrative decision stating that allowing an evocative trademark to describe specific characteristics of the products or services does not necessarily remove the words from the public domain. According the Exchequer Court, it would be different if the applicant were to apply for a trademark which is descriptive of the products or services.

The Exchequer Court decision was appealed before the Supreme Court of Justice of Paraguay. The Supreme Court’s perspective in this case has been that allowing the registration of generic trademarks would be removing from the public domain words used to describe the products or services they cover.

Moreover, the Supreme Court of Justice has stated in the referenced case that removing the words “ESTIMULA TUS SENTIDOS” (Stimulate your Senses) and permitting a ¨monopoly¨ over them would be a violation to the Paraguayan National Constitution (Art. 107) which prohibits anti-competitive conducts of any kind.

In conclusion, the Supreme Court of Justice in Paraguay has sustained the appeal filed by the Intellectual Property Office and rejected the lawsuit filed by COLGATE PALMOLIVE COMPANY for the mentioned trademark application