Wine, beer and chocolate-all with a Southern flavor

Kat friend Fredy Sánchez Merino provides Kat readers with his most recent summary of IP developments in South America.

South America--Bolivia, Brazil, Colombia, Ecuador, Guyana, Peru, Surinam, and Venezuela are all taking issue with the decision given on May 17th 2019, by the Internet Corporation for Assigned Names and Numbers (ICANN), which currently operates the Internet Assigned Numbers Authority (IANA), in which it granted the top-level domain (gTLD) “.amazon” in the name of Amazon EU S.à r.l., a Luxembourg based subsidiary of Amazon.com, Inc. The countries named above, spearheaded by Brazil, have alleged that the word “Amazonía” (which means Amazon in English) is necessary for cultural, social, scientific, and environmental purposes, and should be primarily used by Amazonian countries.

The story goes back to 2012, when ICANN decided to expand gTLDs, and provide a process for applicants to propose the creation of new gTLDs as well as a means to object. ICANN made use of a list maintained by the International Organization for Standardization (ISO) to establish prohibited and restricted geographic names for gTLDs, but such list did not include the Amazon rainforest, so that the application for “.amazon” was initially approved. The Amazonian countries objected with the result that Amazon was denied registration. The company exercised its right to appeal and prevailed (here), in response to which Brazil and the other governments again objected (here). After two years and a lot of term extensions given by ICANN to enable all stakeholders to come to an agreement —which they ultimately failed to reach, the final decision of May 17th has come down in favor of Amazon (here). The Amazonian countries are now looking into other possible legal means to challenge this result.

Chile--The Chilean Court of Industrial Property has ruled against Viñas Concha y Toro S.A (here), a well-known wine company in South America, in its challenge to register the trademark “666 la marca del diablo” in class 25 (here), on the basis of its rights in the registered mark “Casillero del Diablo” Neither the National Institute of Industrial Property (INAPI) nor, on appeal, the Court of Industrial Property, found sufficient grounds based on confusing similarity between the respective marks. Nevertheless, since the trademark “666 la marca del diablo" is currently abandoned, the registrant did not respond, such that the Court ruled in absentia. The upshot is that, irrespective of the decision, the result will likely have limited consequences since the “prevailing” trademark will apparently not be used.

Colombia--The Superintendency of Industry and Commerce has granted registration of the mark “VERSACLOX” (here), on behalf of Bioquimico Pharma S.A.; the trademark was previously owned by BRISTOL MYERS SQUIBB COMPANY but it lapsed in 1982. The application was opposed by Bayer Intellectual Property GMBH (here) on the basis of likelihood of confusion with their registered trademark VERAFLOX. However, in an unlikely turn of events, Bayer has withdrawn its opposition and (even more inexplicably) the SIC has granted the registration to Bioquimico Pharma S.A. despite the possible confusion among consumers.

Argentina--Cervecería y Maltería Quilmes, a well-known Argentinian brewery, has declared its intention to serve as the lifetime sponsor for the homonymous football club Quilmes Atlético Club (here), with which it has had an uninterrupted relationship since 1997. An agreement should be signed by both parties within the next months.

Brazil--The Brazilian company, Chocolates Roma, has successfully registered the trademark “Bitcoin” with the National Institute of Industrial Property of Brazil (INPI) in international class 30 (here), for chocolate coins, chocolate beverages and other similar products. This registration is notable, given that the applicant had, without success, previously sought registration of the same mark in five other classes (9, 35, 36, 38 and 42) This registration makes Chocolates Roma the first applicant to successfully obtain registration of the trademark Bitcoin in Brazil.

Photo by Kmussre and is licensed under the Creative Commons Attribution-Share Alike 3.0 Unported license.