The territory of the Republic of Ecuador is predominantly Spanish speaking. Amerindian languages are also widely spoken, particularly provincially, but their use is gradually diminishing. Despite the dominance of Spanish in Ecuador, the English language is everywhere, and its influence could be said to be growing. This poses certain interesting questions from a trademark law perspective, since the general approach of the Ecuadorian IP Office is to consider terms in foreign languages as “fantasy terms”. That is, foreign language terms will not be considered as being understood by the general public, except in the case of the most commonly known words.
The stated position is more complex in practice when one considers that due to the continued encroachment of the English language throughout the American Hispanic region, generally accepted as even more marked than in the case of the Iberian-Hispanic world, the list of well-known English words is growing and therefore not a fixed concept. In addition, what is or is not a “well-known English word” is largely subjective, with such an assessment often being reduced simply to the personal experiences of the examiner in question. It should also be pointed out that levels of English competence vary greatly among Ecuadoreans, producing somewhat of a lottery in the application of this doctrine.
An interesting case arose a several years back in relation to DISCOVERY COMMUNICATIONS, LLC’s enforcement of its ANIMAL PLANET mark for its well-known television series and documentaries about wild animals and domestic pets. Specifically, CENTRO DE RADIO Y TELEVISION CRATEL C.A., the company behind a national television channel in Ecuador, applied to register MUNDO ANIMAL in Classes 35, 38 and 41 (‘mundo’ means ‘world or ‘earth’). DISCOVERY opposed the applications on the basis of their Ecuadorian registrations for ANIMAL PLANET in Classes 38 and 41.
The oppositions were initially refused, following which all cases were appealed. Upon appeal before the IP Committee in Class 35, the authorities referred to studies as to the penetration of the English language in various countries around the world, saying that it would be incorrect to state that English had penetrated Ecuadorian culture. From there the reasoning was somewhat confused, but it was understood that the authorities considered the terms ‘animal’ and ‘planet’ as not easily understood by the general Ecuadorian public. This was quite an astonishing finding given that the the word ‘animal’ is the same in Spanish as in English, and that the Spanish for ‘planet’ is ‘planeta’. Clearly, this was the wrong starting point for deciding the cases.
It should be pointed out though that above Committee level decision contained a dissenting judgement from one of the Committee members, setting out in no uncertain terms that ANIMAL PLANET would be easily understood by Spanish speakers. The Committee is made up of three members, therefore the opposition was still rejected by 2 to 1. Nevertheless, dissenting judgements are rarely seen within such decisions, and needless to say the dissenting voice was encouraging for DISCOVERY, who decided to further appeal.
A reconsideration motion was filed against the mentioned decision, which is a request for the relevant authority to review its prior finding. Within such action, in contrast to the previous instance the authorities acknowledged that the meaning behind the mark ANIMAL PLANET would be easily understood by general Ecuadorian public, given the Spanish translation of the same is essentially identical except for the addition of the extra letter ‘a’ within the Spanish word ‘planeta’. The Office then went to conclude that the terms MUNDO and PLANET relate to an identical concept, and therefore that there was a risk that consumers would be confused. This reasoning was then followed within the related matters in Classes 38 and 41.
While the Ecuadorian trademark authorities’ acceptance that the meaning of ANIMAL PLANET can be deciphered by the average Ecuadorian consumer represents a welcome return to common sense, the Office’s position as a whole is interesting since the respective marks are being used on television programmes for content relating to animals. That is, in terms of inherent distinctiveness, the marks are towards the lower end of the spectrum. In addition, ‘mundo’ is not in fact a translation of ‘planet’, but rather means ‘world’ or ‘earth’. Therefore, the decision highlights that even in the case of non-literal translations, a conceptual link can still be inferred and be sufficient for a finding of confusing similarity. CorralRosales agrees with the decision, since it reflects the reality in that translations themselves are not always literal or direct.
A similar article was published in WTR on January 16th. Click to read it.
Ian Wall
Associate at CorralRosales
ian@corralrosales.com
