Questions ofinterpretation on soundtrademarks •...._.. ....~_.._....Duteh Supreme Court.July 13,2001Inthe case of Shie1d Mar!< v Kist me questionof Iaw is whether or not Article 2 of me

European Trademark Directive doesoppose the registration of sounds as suchand if not, in what manner sounds have to

be registered. In mis case me DutchSupreme Court has referred to meEuropean Court of justice questions ofinterpretation whether sounds are eligiblefor registration as a trademark.

Shield Mark is the rightful daimant of 14trademark registrations, registered with meBenelux Trademark Office.Amongst thosefourteen trademarks 'the first nine notes of

'Für Bise', 1<u1<elekuuuuu' (cock-a-doodle­doa; crowing of a cock) and the consecutivenotes 'e, d sharp, e, d sharp, e, b, d, c, a' areregistered by Shield Mark as soundtrademarks. The defendant, Mr Kist,started

an advertising campaigo on january I, 1995wherein he uses the melody consisting ofme first nine notes of 'ror. Etise'. This

melody is also played as a telephone tune.Moreover, this melody is playedwhen Kist'smagazines are taken out of displays,placedin bookstores and kiosks.

Although the Court ofAppeal stated thatArticle I of the Benelux Trademark Act

(which corresponds to Article 2 Directive)does not oppose the registration of soundmarks, it held that Shield Mark'sregistrations cannot be considered valid. Ittherefore dismissed Shield Mark's appeal.Shield Mark appealedto the SupremeCourt and raised me question under whichcircumstances a registration is valid underthe Directive.

In pursuance thereof the Supreme Courtsubmitted the following questions 01

interpretation to the European Court 01

justice:I. Does Article 2 Directive require to bE

interpreted in a way that it opposes thEconsideration of sounds as trademarksi

If me answer to question Ia) ís in thE

Territoriality of notoriousmacks _,_..".._,_~_~~._,.__ _,,~ ~

On july 17, 2001 the Superintendent ofIndustry and Commerce rendered hisopinion regarding the territoriality of anotorious trademark. According to thisofficial,in order to recognise the notorietyof a distinetive sigo it is necessary to provethat it is notorious in any of the countriesmembers of the Andean Community(Venezuela, Colombia, Ecuador, Peru andBolívia).Ifthe notoriety of a distinctive sigohas been declared by a non-membercountry of me Andean Community, theSuperintendence of Industry andCommerce is not compelled to recogoiseit. In this sense, the Superintendency ofIndustry and Commeree establishes that,according to Decision 486 of me AndeanCommunity, a notorious sigo is only onethat has been declared as notorious in anyof its member countries.

On August 28, 2001 the Superintendent ofIndustryand Commeree rendered hisopinionregardingthe possibilityof sendingdocumentsonline related to trademark registrations.AlIthe documentation pertainingthe registrationof trademarks canbe submittedonIineexceptmose inwhichpower of attorneys are grantedor legalremedies are filed.Inthese cases,it isnecessary that the attomey appears beforeme Superintendency of Industry andCommerce and personally file thosedocuments. Accordingly,even though thatmost ofthe trademark registrationproceedingcan be handledon tine,there are speeificcasesin which it is necessary the personalpresentation of the attomey before meSuperintendenceof Industryand Commeree.

Theabove two items were contributed by

Fernando Triana, Triana Uribe & Michelsen,

Bogota.

Inlernalional lIe.s

The Third Panel of BtazilianSuperior Courtof justice ruled that a prior trade name haslegal grounds to oppose a trademarkapplication even in case it is not in directcompetidon with the first.The court ruledthat although trademark rights may notgrant proteetion to goods in differentclasses. trade name protection is broaderand covers any market segmento

The appellate court granted the exclusiveright to Maeda S/AAgroindustrial aver thetrademark AGROPEMand determined thatVirbac do Brasil Indústria e Comércio

should cancel its trademark application.Maeda's produets and services are relatedto seed and plants. Vibrac's produets andservices are related to veterinary drugs.

The appeIlate court decision is based onthe Section 8 of the Paris Conventioo.Trade

names do not need to be registered to beprotected in ali countries of the Uniao.Also,the court held that the faet that Maeda

has changed its trade name did not weakenits rights.

Maeda S/A Agroindustrial wasestablished in 1976 as Agropem AgroPecuária Maeda and applied for registrationof the trademark MAEDAAGROPEM in

th.e same year. Vibrac applied forregistration of the trademark AGROPEM20 years later.

Maeda started with a long judicial battleand had its exclusivity right granted bythe lower court. The Court of Justicereversed the decision of the first instance

ruling that a trademark must beconsidered well-known to enjoyprotection in different market segments.Maeda appealed against the decisionc1aiming Iikelihood of confusion due tothe similarity of consumers and Iikelihoodor association.

Erica Aoki, partner, Moreira Uma, Royster &Ohno with Steel Heaor E Davis. Soa Paulo