BLACK OUT Trademark Granted in Class 30: No Unfair Advantage from OREO’s Notoriety

By Vera Abogados

In a landmark ruling dated April 10, 2025, the Council of State of Colombia, acting in sole instance, annulled the resolutions by the Superintendence of Industry and Commerce (SIC) that had denied the registration of the mixed sign BLACK OUT in Class 30 of the Nice Classification, on the grounds of an alleged risk of confusion with the OREO family of trademarks.

The case was brought by Panadería San Jorge S.A., which challenged the SIC’s refusal based on opposition from Intercontinental Great Brands LLC, holder of the OREO trademarks. The challenged resolutions (No. 58950 of 2012 and No. 46907 of 2013) had denied the BLACK OUT mark based on alleged visual, phonetic, and conceptual similarities with OREO, a sign considered to be a well-known (notoriously known) trademark in Colombia.

The reversal was based on a detailed legal analysis concerning the alleged notoriety of the previously registered trademark OREO, and the assessment of likelihood of confusion, unfair advantage, and dilution.

The core legal reasoning rested on the principle that notoriety must be analyzed within a specific relevant sector. When signs are deemed similar or even identical, it is essential to assess whether the goods or services they identify belong to the same market segment or exhibit competitive relatedness. Only when such sectoral overlap exists can there be a plausible risk of unjust enrichment, dilution of distinctiveness, or tarnishment of the reputed mark’s advertising or commercial value.

Sector-Specific Notoriety

The adjudicating body clarified that notoriety cannot be presumed across unrelated sectors. In cases where the goods are not competitively connected, the use or registration of a similar or identical mark does not inherently give rise to an unfair advantage or a likelihood of confusion with the reputed mark. In this instance, it was determined that the sign BLACK OUT, intended for use on goods in Class 30, did not infringe upon nor seek to benefit from the reputation of the OREO mark, also registered in the same class, due to the absence of conceptual, visual, or phonetic similarity sufficient to confuse consumers.

No Risk of Confusion or Association

The decision further held that the sign BLACK OUT was sufficiently distinctive in its own right and that no direct or indirect association with the OREO brand could be established. As such, the authority declined to assess in detail the evidence and arguments regarding OREO’s notoriety, since the lack of reproduction, imitation, translation or transcription of the well-known mark rendered any analysis of unfair advantage or dilution unnecessary.