Marietta Flores June 7 2021 Fanciful marks: interpretation and legislation OMC Abogados & Consultores | Intellectual Property - Peru Marietta Flores Intellectual Property IntroductionConceptual contentAndean Community position on fanciful marksPeruvian position on fanciful marksPeruvian case law regarding fanciful marksIntroductionIn doctrine, trademarks can be classified according to different criteria – including:the goods that the marks distinguish in the market;their structure;their conceptual content; andthe degree to which they are known in the market.This article explores the classification of trademarks according to their conceptual content.Conceptual contentTrademarks can be classified into suggestive, arbitrary and fanciful marks. These categories can be differentiated by their degree of distinctiveness.Suggestive marks'Suggestive marks', also known as 'evocative marks', indirectly suggest or evoke some idea about the characteristics or properties of the products or services that they intend to distinguish without describing them – for example:NESCAFÉ, to distinguish coffee;LAVADOCIL, to distinguish dishwashers ('lavaplatos' is 'dishwasher' in Spanish); orCERELAC, to distinguish cereals.Arbitrary marks'Arbitrary marks' are distinctive, but to a lesser extent than fanciful marks. They have a meaning that is known to the consumer but that has no relation to the product or service that they distinguish – for example:CIELO ('sky' in Spanish), to distinguish table and mineral water; orAPPLE, to distinguish computers.Fanciful marksFanciful marks are those which are exclusively created or invented by their author to constitute a trademark. They are original, have no meaning and are unrelated to the product or service that they intend to distinguish – for example:KODAK, to distinguish photographic equipment; orBARRINGTON, to distinguish textiles and textile products.For this reason, both doctrine and jurisprudence allude to the fact that these signs have a high level of distinctiveness.Andean Community position on fanciful marksWith regard to fanciful trademarks, the Court of Justice of the Andean Community has indicated the following:Words of fantasy are words created by the entrepreneur that may have no meaning but refer to an idea or concept; so are the words with their own meaning that distinguish a product or service without evoking any of its properties. An important feature of this type of marks is that they are highly distinctive (...) original combinations can be created with infinite variants and the result is the birth of new words that contribute to enrich the universe of marks.(1)With regard to signs which comprise words in a foreign language, the Court of Justice of the Andean Community has established as follows:Signs formed by one or more words in a foreign language that are not part of common knowledge are considered as fanciful signs and, consequently, its registration as trademarks is appropriate.These signs will not be registrable if the conceptual meaning of words in a foreign language has been made known to the majority of the consumer or user public, and if in addition, they are generic, descriptive or commonly used terms in relation to the products that it is intended to identify.(2)According to settled case law, a term in a foreign language is considered descriptive if:it is a denomination in a foreign language that has become part of the Spanish language;it is understood by the public; orits use is necessary in the import or export trade.Signs which include words in a foreign language that are of common use but which also include other elements that give them distinctiveness are registrable.Peruvian position on fanciful marksFormer Director of the Directorate of Distinctive Signs of the National Institute for the Defence of Free Competition and the Protection of Intellectual Property (INDECOPI) Patricia Gamboa Vilela has held the following:fanciful signs are those signs 'created' or 'invented' to function as a mark. They are denominations, figures or any element that lacks meaning for the average consumer. To the extent that they are signs that before their adoption by the applicant did not exist, they do not have any type of link with the product or service for which it is requested, and this makes it a sign with high distinctive aptitude.(3)Fanciful marks are said to be the result of great effort and an imaginative and creative process. Therefore, such marks enjoy a greater distinctive power. Despite the creator's efforts, it can be difficult to impose a fanciful mark on the market in such a way that consumers remember it and associate it with the product or service that it distinguishes. However, once positioned in the market, the public is unlikely to forget it because it is original and novel.Because the creator of a fanciful trademark must put in a greater effort in this regard, it has been held that such marks deserve greater protection than other types of trademark. Therefore, where a comparative examination between signs is performed to determine whether such signs are similar and could lead the consumer to confusion, the characters of the signs (ie, whether they are arbitrary or fanciful) is taken into consideration.Article 45 of Legislative Decree 1075 states as follows:For the purposes of establishing whether two signs are similar and capable of causing confusion and error to the consumer, the competent Directorate shall take into account mainly the following criteria:a) The successive appreciation of signs considering their overall appearance and with greater emphasis on similarities than differences;b) The degree of perception of the average consumer;c) The nature of the products or services and their form of marketing or provision, respectively;d) The arbitrary or fantasy character of the sign, its use, advertising and reputation in the market;e) If the sign is part of a family of trademarks. (Emphasis added.)Where one or both of the signs in a comparative examination is a fanciful sign, it is impossible to compare them on a conceptual level because fanciful signs have no meaning, so it would be difficult to determine whether a conceptual similarity existed. Therefore, other criteria (eg, the signs' phonetic or graphic similarity) must be used to determine whether they resemble each other and could cause confusion.Peruvian case law regarding fanciful marksAn exemplary case concerned the mark ASTROM and a corresponding logo (Figure 1), which was filed by Calderon Velasque, Anderson, in Peru, to distinguish "clothing, trousers" in Class 25. Figure 1: ASTROM logoThis application was opposed by Marathon Casa De Deports SA, Ecuador, on the grounds that it was the owner of the mark ASTRO and a corresponding logo (Certificates 91379 and 90231) in Peru, which distinguished products in Class 25.In its response to the opposition, the applicant alleged that from a conceptual point of view, the name ASTRO referred to a celestial body with a defined form, while the term ASTROM was the last name of a Finnish gospel singer. It summarised that the signs had different concepts.The INDECOPI Directorate of Distinctive Signs declared the opposition grounded and consequently denied the registration of the requested sign (Resolution 0007-2014/CSD-INDECOPI). Despite recognising that the marks could not be compared from a conceptual perspective, it held that the marks were similar from a phonetic and graphic perspective and therefore could not coexist in the market without causing confusion:From the conceptual point of view, the name ASTRO, refers to the concept of a celestial body that populates the sky, while the term ASTROM, will be perceived by the consuming public as an element of fantasy, so it is not possible to determine the existence of conceptual similarity between the signs in conflict. However, this does not detract from the similarity of the aforementioned signs in graphic and phonetic aspect.(4)For further information on this topic please contact Marietta Flores at OMC Abogados & Consultores by telephone (+51 1 628 1238) or email ([email protected]). The OMC Abogados & Consultores website can be accessed at omcabogados.com.pe.Endnotes(1) Process 72-IP-2003 (Court of Justice of the Andean Community, 4 September 2003).(2) Process 113-IP-2008 (Court of Justice of the Andean Community, 28 January 2009).(3) Patricia Gamboa Vilela, "La aptitud distintiva como requisito de registrabilidad de las marcas y su regulación en la Decisión 486", Revista de Derecho Administrativo, Lima, 2006.(4) Resolution 00072014/CSDINDECOPI from File 544072-2013.