A resolution by Ecuador’s highest administrative court applying the principle of specialty had the effect of adopting criteria set by the Andean Community Court of Justice.  Resolution No. OCDI-2020-589. Case: BRITT, Class 30 v. BRIT & design, Class 31.

Vafo Praha, s.r.o. applied for its trademark BRIT & design to protect pet food and treats in Ecuador. Chocolates Britt Sociedad Anónima appealed to the Collegiate Body of Intellectual Rights (Collegiate Body) a previous dismissal rendered to its opposition. This was grounded in a number of previous registrations for its trademark BRITT, to protect chocolate, coffee, cookies, and some other products in Class 30 and the risk of confusion.

In that appeal, the Collegiate Body examined the governing criteria to be analyzed to sustain connection or relationship between products and/or services.

The principle of specialty means that the trademark’s scope of protection is granted only to those goods and services for which the trademark is registered as well as similar ones. In other words, it is possible that two identical trademarks may coexist subject to both trademarks covering different goods and services that will not mislead consumers.

The Collegiate Body concluded that in order “[t]o determine whether there is a link, connection or relationship between products and/or services, it is appropriate to take into consideration the degree of similarity of the signs under analysis and any of the following three substantive criteria:

1. The degree of substitution (interchangeability) between the products or services.
2. The complementarity between the products or services.
3. The possibility of assuming that the products or services come from the same entrepreneur (reasonableness).

In re Andean Process 100-IP-2018, the Collegiate Body sustained that the three criteria, substitutability (interchangeability), complementarity, and reasonableness, prove the existence of a relationship, link, or connection between products and/or services, and some of the traditional criteria used for this analysis have been deemed “insufficient.” Such criteria, including belonging to the same class of the International Nice Classification; the supply, distribution, or marketing channels; the advertising media used; the purpose or function; the same gender; or the very nature of the products or services, are circumstances which can be analyzed in a complementary way to any of the three abovementioned substantive criteria.

In the case under discussion, the Collegiate Body considered the Andean court’s statements, and reviewed the parties’ arguments and evidence. It then concluded that:

• It is not common for a company to market products for human consumption with trademarks also used to market animal feed, as there is no incentive to suggest to the consumer a direct relationship between the two.
• A reasonable consumer would not assume two similar trademarks, one for pet food and the other for human food, as belonging to the same manufacturer.
• The foods for animals listed by the applicant cannot be considered as complementary to the Class 30 products listed by the appellant, since most animals, and particularly pets, do not consume coffee, sugar, sweeteners, chocolates, or cookies. Consumption of several of these products is even contraindicated, due to their toxic characteristics for pets. For this same reason, none of the products protected by the registered trademark in Class 30 can be considered a substitute for food for animals in Class 31, to which the applied trademark has limited its protection.
• In the same vein, and contrary to what was stated by the appellant, there is no confluence of the distribution and sales channels of both products.

In conclusion, the Collegiate Body upheld the previous decision; thus, registration of BRIT & design was granted to identify pet food and treats.

The aforementioned resolution goes beyond the analysis of the relationship between products in Classes 30 and 31 and is notable for its in-depth analysis on the application of the principle of specialty in the context of the Andean Community regulations.