The value of a coexistence agreement

The Judges of the High Administrative Court overturned a resolution of the Uruguayan Patent and Trademark Office which had rejected the application of trademark ELGOURMET.COM. The Court stressed that while certain similarities between the marks in conflict (ELGOURMET.COM and GOURMET) can be observed, it is also true that there are obvious differences between the two.

The trademark ELGOURMET.COM owned by PRAMER S.C.A. (PRAMER) had been requested to cover all goods in international class 16. For its part, the Uruguayan Patent and Trademark Office raised an ex-officio objection against PRAMER’s application based on the prior existence in the register of GOURMET (word mark), a mark registered by ADVANCE MAGAZINE PUBLISHERS, INC. (hereinafter referred to as “AMPI”) to distinguish only “magazines” in Class 16. Even though PRAMER and Advance had reached before the administrative resolution to a coexistence agreement by which the owners of the registered trademark consented the use and registry of ELGOURMET.COM.

PRAMER filed a claim with the High Administrative Court—the highest body in Uruguay with jurisdiction over administrative decisions issued by governmental bodies—seeking the annulment of the Patent and Trademark Office’s resolution that rejected its application for ELGOURMET.COM. PRAMER’s action was based mainly on the coexistence agreement executed abroad by and between PRAMER and Advance Magazine Publishers, INC.

The Judges of the High Administrative Court unanimously ruled to annul the administrative resolution of the Trademark and Patent Office stressing that while certain similarities between the marks in conflict can be observed, it is also true that there are obvious differences between the two. Moreover, the agreement executed by the owners of the two marks is the greatest guarantee possible that these marks are not liable to be confused. That assurance of unlikelihood of confusion stems from the fact that it is the owners of famous marks—as is the case here—themselves who are most interested in preventing that their marks be confused with the marks of others.

This decision of the High Administrative Court is of utmost importance as the Court took into account a private agreement executed by the owners of the marks in question to the extent that such agreement was the main argument stressed by the ruling body to base its annulling judgment. This is especially significant in view of the fact that private agreements are traditionally not taken into account by the P.T.O. and the Board of Appeals when deciding a case. This is also highly uncommon in the High Administrative Court, which in previous occasions has even expressly rejected such consideration in cases brought before it.