The likelihood of confusion between trademarks belonging to a business group has disappeared

Until August 2022, the ownership of trademarks and commercial slogans of a business group had to be held by a single legal entity. The examiner considered that the risk of confusion or association related to the business origin of the goods and services could occur even when the companies belonged to the same business group.

As a result, if the parent company is the owner of a family of trademarks, the subsidiary could not register a derivative trademark that contained the same common feature in its name, in spite of belonging to the same business group. It was also impossible to partially transfer a trademark portfolio from one company to another within the same business group

This situation changed with the adoption of Resolution 51804 on August 5, 2022 by the Superintendence of Industry and Commerce (SIC). The Single Circular of the SIC was modified in such a way that the trademark that belong to the same business group is no longer considered as an antecedent which can cause confusion:

“When the circumstances arise that make it necessary to recognize the existence of a business group, there must be unity of purpose and direction, in addition to subordination, which translates into production processes that, for the purposes of industrial property, would have the same business origin, which implies that the consumer is not faced with a likelihood of confusion or association, when encountering distinctive signs belonging to members of the same business group”.

For this exception to apply, it will be necessary to inform the situation of the business group to the examiner through the information contained in the RUES. In the case of foreign entities, a statement signed by the legal representative must be provided that clearly shows the unity of purpose and direction between the companies, in addition to the document issued by the competent authority in the jurisdiction of domicile of these companies, if it exists.