THE IMPACT OF RECOGNITION OF A WELL KNOWN MARK.

The recognition of a mark as well known is of great value for the owner of a mark because it resembles a “coveted treasure”. The consolidation of a mark demands a considerable effort to its owner.

In order to achieve the desired mark prestige he should strive to provide the best and highest quality of products and/or services available to consumers, using strategic mechanisms in advertising to conquer the consumer’s acceptance, recognition and loyalty.

The recognition of the mark is not automatic but subject to whom invokes such condition in a contentious procedure providing the evidence showing such quality. In Article 228, Decision 486, are quoted the factors that should be considered by the administrative entity. Moreover, there is the mandatory compliance precedent: Resolution 2951-2009/TPI-INDECOPI of November 9th, 2009.

In recent resolutions issued by INDECOPI, the recognition of a well known mark stands out “it is the legal ground to grant a distinctive sign (trademarks or service marks) special protection within the trademark system; a protection which goes beyond the principle of registration, territoriality and may also go beyond the speciality principle”, as it is the case of Resolution No. 2830-2015/CSD-INDECOPI, issued on October 7th 2015, in the application for registration procedure of the mark Toto-baby to protect “babies and children’s garments in general” in class 25 filed by Edith Mayela Cervantes López, which was opposed by Nalsani S.A. on grounds of its marks totto-totto and TOTTO both in class 25 and TOTTO denominative mark in class 18, which had already obtained notoriety in Colombia. The Colombian Trademark Office (La Superintendencia de Industria y Comercio de la República de Colombia) declared its opposition well founded and moreover recognized the mark notoriety to protect “carrying bags” in class 18 of The International Classification of Nice.

Nalsani S.A., our client, supported the notoriety of its mark providing plenty of evidence: Resolutions No.12630 and No. 12481 issued by The Colombian Trademark Office which recognizes TOTTO as a notorious trademark based on, among other things: the results obtained in marketing sampling tests, sales, franchises, newspaper articles, certificates of existence and certificates of registration.