TO THE HEAD OF THE DISTICTIVE SYMBOL OFFICE – INDECOPI
BARREDA MOLLER, on behalf of VIÑA CONO SUR S.A., in record Nº 176409, on the registration of the trademark ORIGEN, comprised in class 33, we respectfully state:
Through Resolution Nº 7789-2003 – INDECOPI/OSD dated July 4, 2003, we have been notified on July 9, 2003 that the applied for registrationORIGEN to distinguish products comprised in class 33 has been denied. Being in disagreement with the resolution, we hereby file an APPEAL within the legal term based on the grounds as follows:
I. DE FACTO GROUNDS
1) Opposed resolution ground
The resolution of the Distinctive Symbol Office, considers that the denomination “origen” does notconstitute a term per se by indicating the following:
“In that sense it is evident that the applied for symbol is a denominative symbol, which is comprised of the denomination ORIGEN and, given the nature of it, considering the evaluation of same as a whole, that is, without breaking up its graphic-phonetic unit, we established that it is a symbol lacking distinctiveness since it does not haveany element that provides the requested symbol with that characteristic, being a symbol that is not able to individualize by itself before consumers the products to be distinguished as having a given company origin. In effect, the applied for denomination to be registered, lacks the necessary distinctiveness to become a trademark since it will not be perceived as such, because that denominationis usually used along with another one or with a geographical name to indicate certain origin. That is why, pursuant to the above stated, it is determined that granting the applied for registration is not applicable, since said denomination must remain in public domain.
2) Consideration of the distinctive nature (distinctiveness) of the term ORIGEN
The DistinctiveSymbol Office is very accurate when indicating that a symbol has a distinctive capacity, that is, the function or essential purpose of a trademark. Thus, it indicates as follows:
Distinctiveness is the capacity of a symbol to be distinguished by a person in the market of products or services marketed or provided, respectively, from the others having the same or similar nature offered inthe market. Thus, the symbols constituting the common or usual designation of the pertinent product or service will not have a distinctive aptitude, that is, generic symbols, or those that just inform the consumer about the characteristics of same, namely descriptive symbols, and neither will those comprised only of common use denominations or necessary in the marketing or provision of same,among others.
The essential function of a trademark is to distinguish a competitor’s products or services from the rest of products or services offered in the market. This distinctive character of the symbol allows the entrepreneur to individualize his/her products or services in order to participate in the market and the consumer to identify the origin, source and quality of theproduct or service intended to acquire or contract, without being exposed to confusion or fraud.
We may first notice that those symbols or expressions constituting the common or usual designation of the product or service that is intended to identify will lack distinctive character.
Firstly, it is worth considering that the usual or common expressions, are not but thoseactually used in practice, commerce, colloquial language or jargon to refer to major qualities and/or characteristics that define a given product, that is, those that in practice have a descriptive or generic character with respect to the product.
If a term to be regarded as descriptive and therefore non susceptible to access a registration, may consist of a symbol or indication that...