The misleading nature of a declared PDO trademark: CAFÉ DE COLOMBIA vs. QUINDIPAN

setembre 2021

On 19th July 2021, the Colombian Superintendence of Industry and Commerce ruled in a case in which the National Federation of Coffee Growers of Colombia filed its opposition against the application for the trademark “QUINDIPAN” for classes 30 and 43 of the Nice Classification.

Colombian coffee is one of the most valuable products in existence, which is why the region has obtained the declaration of this product as a Designation of Origin on the basis of the characteristics and qualities of the territory, both geographical and human, so that the main task of this Federation is to protect the Colombian coffee grower through an effective, democratic and representative trade union organization.

Among other issues, the Federation tries to protect Colombian coffee from all those brands that may be misleading for the consumer and that may make him believe that another brand has some kind of relation with this coffee (and, therefore, its same qualities) when in fact it does not.

However, each case – as is customary in law – is different, and the requirements for understanding that a mark may be misleading to the consuming public are not always met.

In the decision we analyzed below, the Colombian Superintendence of Industry and Commerce did not consider the trademark “QUINDIPAN” to be misleading with respect to “CAFÉ DE COLOMBIA”.

Let us look at the arguments:

What has the National Federation of Coffee Growers of Colombia claimed in its opposition?

– The possibility of misleading the trade circles and the public as to the characteristics and qualities of the coffee products or those marketed in the services that the mark under analysis seeks to identify (classes 30 and 43 of the Nice Classification).

– The incorporation of a reference to one of the most important municipalities (geographical origin) of the Designation of Origin: The mark contains the denomination “Quindi”, a term similar to the name of the Department “Quindío”, this being an area of high importance in the coffee growing activity of the country.

– Class 30: The trademark applied for evokes (directly refers to) the designation of origin “Café de Colombia” to identify the same designated product.

– As regards class 43, “coffee services” and “cafeteria services”: the consuming public may reasonably infer that these types of restaurant and cafeteria services are offered by entrepreneurs engaged in the commercialisation of Colombian coffee.

What has the applicant for the trade mark “QUINDIPAN” replied?

– That “QUINDIPAN” does not literally contain the expression “CAFÉ DE COLOMBIA”, nor does it evoke it, so that there is no conceptual proximity between the two corresponding terms.

– That it cannot be argued that the sign evokes the PDO because they are not visually similar as none of the words they contain coincide.

– That the sign applied for registration as a trademark does not contain the protected PDO;

– the signs are not similar

– Decides to restrict the goods in Class 30 initially applied for to only: bread, pastry and confectionery, ice cream.

What has the Superintendency of Industry and Commerce resolved?

The Superintendence of Industry and Commerce refers to letters i) and j) of article 135 of Decision 486 of the Andean Community in that they provide that the following may not be registered as trademarks: signs which are likely to deceive commercial circles or the public as to the geographical origin, nature, method of manufacture, characteristics, qualities or suitability for use of the goods or services in question; nor those which reproduce, imitate or contain a PDO for the same or different goods, if their use could cause a risk of confusion or association with the denomination or imply an unfair exploitation of its notoriety; respectively.

In this sense, and adhering to the particular case, the Superintendence states that the trademark “QUINDIPAN” is not a reproduction of the protected denomination “CAFÉ DE COLOMBIA”, nor is it a reproduction or imitation of the denomination of origin.

This is based on resolution 4819 of 4 March 2005, which declared the protection of the denomination of origin “CAFÉ DE COLOMBIA” since, even if this PDO exists, it is necessary to determine whether the consumer associates or confuses the sign applied for as a trademark (in this case “QUINIDPAN”) with the PDO “CAFÉ DE COLOMBIA”.

And the truth is that, as established by the Superintendence in its resolution, although the sign applied for includes in its expression the term “QUINDI“, which may be evocative of Quindío, it is not a reproduction of the PDO “CAFÉ DE COLOMBIA”, since “although it could be associated with the department of Colombia, this is not an impediment to its grant” and “having analyzed the sign applied for, it is not found that it contains the designation of origin “CAFÉ DE COLOMBIA”, since none of its elements refers either directly or indirectly to it“.

The Office concludes that the sign applied for registration does not fall under this ground of unregistrability since it does not reproduce, imitate or contain a protected appellation of origin, and therefore it is not misleading in the terms of the aforementioned ground since it does not infringe the conditions of truthfulness imposed in the commercial trade and does not necessarily inform consumers erroneously about the goods and services distinguished with it.

Therefore, although the FNCC has opposed the registration of the disputed trademark with the best intention of protecting Colombian coffee, there are several legal factors to be taken into account for the declaration of the misleading nature of a trademark, especially if a protected designation of origin is involved. However, this decision is final in administrative proceedings, which does not prevent the FNCC from pursuing the corresponding legal proceedings.

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Eduardo Zamora | Sara del Río

Image: Nathan Dumlao on Unsplash