Trademarks Latin Net, Latino Net and Latin Mail

For the prohibition to register geographical indications as trademarks to apply in the Andean Community, it is necessary that:

- the expression consists in an indication of origin or in a symbol designating a given geographical place.

- the geographical place directly or indirectly designated be known for its production of the relevant products, that is, that there is a close link between the geographical place and the products.

- the products for which the trademark has been applied for do not come from the place designated by the sign.

This was the conclusion of the Andean Court of Justice when consulted by the Colombian Council of State in a nullity action brought by Starmedia Network, Inc. against the decision of the Trademark Office to refuse the registration of the trademark LATIN MAIL (Andean Court of Justice. Proceeding 4-IP-2003, February 19, 2003). The Colombian Trademark Office had deemed that this trademark could cause confusion with respect to LATIN NET and LATINO, two combined trademarks (word + design) already registered.

The Council excluded the words LATIN and LATINO from the comparison for two reasons:

- LATIN and LATINO can be deemed denominations of origin because they indicate clearly that the communication services covered by LATIN NET and the computer services intended to be covered by LATIN MAIL are rendered from one or more Latin American countries, so there is a close relationship between the geographical place and the services.

- LATIN and LATINO are words of common use that may not be appropriated by anybody.

The Council, hence, compared the expressions NET and E MAIL, judging that there were no phonetic, orthographical, visual or conceptual similarities sufficient to think that if the trademarks LATIN NET, LATINO NET and LATIN MAIL would coexist in the market, they would induce the consumers into error.

Consequently, the Council of State declared null the decision of the Trademark Office, and allowed the registration of LATIN MAIL (Council of State, File 6942, April 24, 2003).