Invalidation of trademark GYMROLLSROYCE in Class 25 for confusion with trademark ROLLS-ROYCE in Class 12 by Maria del Carmen Arana Courrejolles (ESTUDIO COLMENARES & ASOCIADOS S.A.C. – Peru)
Case ROLLS-ROYCE PLC vs. Edgar Wilder Depaz Leyva – Resolution 4827-2015/TPI-INDECOPI 11-12-2015 (in Spanish) – www.indecopi.gob.pe
A recent case involved ROLLS-ROYCE P.L.C., from United Kingdom, owner of several trademarks for ROLLS-ROYCE in Peru, mainly in class 12 (vehicles), that entered a nullity action against the “GYMROLLSROYCE” trademark, Certificate Nº 191307 covering garments in class 25 of the International Classification, granted in the name of the Peruvian citizen Edgar Wilder Depaz Leyva.
The Administrative Authority of First Instance rejected the nullity action on the basis that, although the two signs in question were similar, the goods covered by the marks were different so that the co-existence of the two marks would not cause confusion amongst consumers.
By Resolution No. 4827-2015/TPI-INDECOPI of December 11, 2015 the Administrative Authority of Second Instance repealed the First Instance Resolution and upheld the nullity action.
The Second Instance Authority considered that the goods distinguished by the registered trademarks (Certificate Nº 63696, class 12 of the International Classification) and ROLLS-ROYCE (Certificate Nº 99982, class 12 of the I.C.) are linked to the goods of class 25 covered by the trademark GYMROLLSROYCE, subject matter of the nullity. Also, it was pointed out that in accordance with the current business practice, it is usual for enterprises manufacturing vehicles also to sell merchandise, mainly garments (sign applied for), identified with the same trademarks, such as PORSCHE, FERRARI, MERCEDES BENZ, amongst others, which not only identify vehicles but also garments.