CLIENT: ADIDAS
COUNTRY: BOLIVIA
CASE: Adidas- Granting of three-dimensional registration of World Cup ball
BACKGROUND
On December 11, 2017, ADIDAS A.G. requested to the National Intellectual Property Service (SENAPI) of Bolivia, the registration as a three-dimensional trademark of the official 2018 World Cup ball “TELSTAR”. Application Nº SM 5895-2017.
RELEVANT ASPECTS
1. Conditions for three-dimensional trademark registration in Bolivia.
2. Specific Study regarding feasability of three-dimensional trademark registration in Bolivia.
1. CONDITIONS FOR THREE-DIMENSIONAL TRADEMARK REGISTRATION IN BOLIVIA
Under Article 134, paragraph f) of Decision 486, a trademark may consist of “the shape of a product its packaging or wrappings;”, among which we can find three –dimensional trademarks, whose conditions for registration are:
1. Application, made on an official registration form of SENAPI:
a) Identification of the applicant.
b) If pertinent, the identification of the legal representative.
c) The trademark whose registration is requested, with their
d) Express statement of the products or services related to which the trademark protection is intended, according to the International Classification of Goods and Services under the Nice Agreement.
2. If pertinent, power of attorney documents.
3. Proof of payment of the prescribed fees.
It is requiered as well, in order for SENAPI to grant registration to a non traditional sign, such as three-dimensional trademarks, that the sign presents DISTINCTIVENESS in its two forms:
i) Intrinsic Distinctiveness: which determines the required capability of the sign to distinguish products or services in the market, in relation to three- dimensional trademarks, the signs must not consist exclusively of the everyday shape of goods or their packaging, or of shapes or characteristics which are dictated by the nature or by the particular function of the product or service in question.
ii) Extrinsic Distinctiveness: which determines the sign capability to stand out from other signs in the market, presenting subjective or special features that produce a particular effect in the observers, which is different to the one produced by the observation of other distinctive signs or industrial signs.
2. SPECIFIC STUDY REGARDING FEASABILITY OF THREE DIMENSIONAL TRADEMARK REGISTRATION IN BOLIVIA
The case had to be strategically analyzed, being rejected ex officio the trademark registration by the competent office in the first instance, considering it a common shape lacking of distinctiveness, falling in the grounds of non registrability stipulated in Art. 135, paragraphs b) and c) of Decision 486 of CAN.
May not be registered as trademarks signs that:
a) lack of distinguishable characteristics;
b) consist exclusively of the everyday shape of goods or their packaging, or of shapes or characteristics dictated by the nature or particular function of the product or service in question;
LODGING OF AN APPEAL
In light of the decision, on April 4, 2019, the respective revocation request was lodged arguing the distinctiveness of the three dimensional trademark that constitutes the 2018 World Cup ball and that it does not refer to an everyday shape, containing unique particular features that clearly identify the product´s commercial origin and distinguish it from other balls in the market, such as:
- Unique reliefs.
- Signature textured panels, not containing seams between them.
- In addition, a model of the ball was attached to the file with the intention to facilitate and improve the evidence consideration.
SENAPI DECISION
SENAPI, taking into account the grounds on which the revocation request was presented, issued Administrative Resolution Nº 1205/2019 of April 26, 2019, GRANTING the requested three – dimensional registration, under the registration number 184945-C, to protect products within Class 28 of the Nice Agreement concerning the International Classification of Goods and Services.
CONCLUSIONS
As a consequence of the resolution, the official 2018 World Cup ball is registered and under protection in the Plurinational State of Bolivia, which allows to take action even to this day, against counterfeit products in the local market.
SENAPI undoubtedly made use of great judgement when making the final decison, giving full force and effect to three- dimensional trademarks in Bolivia that fulfil the relevant registration requirements.
DR. ANDRÉS DAZA
Lawyer / Cervieri Monsuárez & Associates
NP. DIEGO CERVIERI
Notary Public / Cervieri Monsuárez & Associates