“In the opposition proceeding against the application for the trademark CHOLOFLIX in class 41, the National Service of Intellectual Rights of Ecuador (SENADI) has considered that the trademark was not registrable because there is a risk of confusion or association on the part of consumers. This is due to the existence of the trademark NETFLIX of Netflix Inc in class 41″. This is how the article written by our associate Katherine González H. for WTR opens -wherein she covers the reasons behind the decision.
The process began on May 21, 2020, when a natural person applied for registration of the trademark CHOLOFLIX for services in class 41, specifically: “education; training; entertainment; sporting and cultural activities; supply of films, not downloadable, by means of video on demand services; supply of television programs, not downloadable, by means of video on demand services; distribution of films; entertainment services.“
Netflix, in the face of this, filed an opposition based on the trademark NETFLIX, which covers the following aspects of class 41:
“Entertainment services; information on entertainment activities; production of films other than for advertising; provision of films and television programs that are not downloadable via video on demand streaming services”, among other.
In addition, the entertainment company NETFLIX claimed that it was already known to a lot of population. In the counterclaim, the plaintiff replied on February 8, 2021, claiming that NETFLIX was a weak mark and therefore did not have distinctive character. It requested, therefore, that the opposition be dismissed and the application be granted.
On July 18, 2022, SENADI issued Resolution No. 2000254, whereby it accepted the opposition and rejected the registration of the trademark CHOLOFLIX. It also pointed out that it would be difficult for consumers to easily differentiate the services offered with similar names and that they could consider that the conflicting services were provided by the same company; therefore, there was a risk of confusion or association.
Our associate has added the following comment in conclusion: “although SENADI accepted NETFLIX’s opposition and rejected a detailed analysis of the similarities between the trademarks, as well as the identity of the services in question, there was no analysis – nor mention – of the well-known character of the NETFLIX trademark alleged by NETFLIX. Although SENADI has improved its analysis in trademark oppositions compared to previous years, the motivation is still insufficient as it does not make an exhaustive assessment of all the arguments raised by the parties. This assessment is especially important in opposition proceedings, where third party rights are at stake.”