For lawyers like us who are dedicated to the legal protection and management of trademarks, achieving the declaration of notoriety for any of our clients’ trademarks is always a milestone of success; but for me, the declaration of notoriety for the BABYLISS trademark is special because my team and I decided to think outside the box, explore other paths, and achieve protection for one of the most important trademarks of the multinational personal care and beauty products company, Conair.
We had to protect the BABYLISS trademark against what was an evident attempt to parasitically use the trademark through the registration and subsequent consolidation of the right to use the BELLALISS trademark, which apparently was not confusing, and where simple opposition due to confusion would not prevent its registration.
How did it all start? It was determined that the BELLALISS trademark had been registered to identify hair products and devices in classes 3, 08, and 11. BELLALISS is an expression that, in principle, is not confusing with the BABYLISS trademark, being formed by common words with conceptual content BELLA and LISS, commonly used in the configuration of beauty trademarks related to hair care. Therefore, there was a high risk that opposition to the registration of that trademark would not succeed.
It was also known that the same trademark, BELLALISS, is registered in Venezuela and is massively used in that country to identify beauty care products, in such a way that there was a systematic imitation of the images, packaging, and products of the BABYLISS product line. And, as the cherry on top, the now applicant in Colombia had been the manager of the Venezuelan company that owns the BELLALISS registration.
The client was advised to present the opposition and in it seek the declaration of notoriety of the BABYLISS trademark in Colombia. We wanted the examiner to be more rigorous when assessing confusion, coupled with the indications of parasitic use that could be presented from the trademark in light of what was being done in Venezuela. Perhaps this would remove that hint of weakness that the BABYLISS trademark might have against BELLALISS.
But the declaration of notoriety is not a simple matter. The obtaining and legalization of evidence is a laborious task, taking time in its organization and assessment. This is even more difficult when the owner does not have a headquarters in the country, and the marketing areas are immense and overloaded with work to attend to the presence of their trademarks in more than 150 countries in the world, all added to the fact that we had a limited time to provide the evidence. So what to do? We, as an office, looked for the evidence ourselves. The client only gave the go-ahead for the opposition; everything else was in our hands. Oh, and there was a restricted budget.
Surveys, top-of-mind studies, or positioning in the field were ruled out. There was neither time nor budget. We only had the sales volume information given to us by the distributors. But how to demonstrate what percentage of sales they represented against the global market and what position of preference the trademark has against competitors? What are the competing trademarks in the country? Neither I nor any of our lawyers knew that market. The answer, as it seems to be always today: let’s turn to technology and the immense public and free databases that the internet offers us.
The first thing was to use the Google Trends tool https://trends.google.es/trends/. Being Google the most used search engine in Colombia, the tool indicated which trademarks had the most appearances when searching for products in the relevant market (dryers, irons, and tweezers). BABYLISS was among the second and third most searched trademarks of the entire universe of more than 50 trademarks, in the last five years, within Colombian territory.
In addition, the same exercise was done on the three most used Marketplaces in Colombia: Amazon, MercadoLibre, and Éxito, yielding the same result. The BABYLISS trademark was among the top three trademarks with the most appearances on these platforms when searching for the products it identifies.
To this was added an inquiry into the public databases of the Colombian Tax Directorate, DIAN, under the tariff heading of the products under study, to determine which were the most imported trademarks and who were the largest distributors. As a result, it was established that more than 25% of the products imported under the corresponding tariff heading were of the BABYLISS trademark.
All this public information was endorsed, in the case of recognition in the virtual world, by a media agency and, on the other hand, by a customs information center, certifications that had a much lower cost than what a trademark positioning marketing study would cost.
To all this was added a certification of sales from recent years and the list of BABYLISS trademark registrations worldwide obtained from the WIPO public database. That was enough for the Superintendency of Industry and Commerce to declare the notoriety of the BABYLISS trademark and decide to deny the registration of the BELLALISS trademark, in classes 03, 08, and 11 (Resolution No. 12589 of March 14, 2023). The applicant appealed, but the Superintendency confirmed the decision in all its parts (Resolution No. 37128 of July 4, 2023).
The decision highlights that the Trademark Office recognizes that the BABYLISS and BELLALISS trademarks are not confusing. However, after assessing the notoriety, it determines that there could be a dilution of the distinctive power of the BABYLISS trademark by the use of the BELLALISS trademark, deducing confusion that only comes from notoriety. The declaration of notoriety was then essential to identify confusion that was not evident at first glance.
The notoriety that stands out did not result from traditional market studies but from the reality we must face today. This is a reality that shows digital marketing, much more reliable than what traditional marketing interviews and surveys reveal. The latter often come with biases and collection errors, and their always questionable partiality as they are provided and paid for by those who wish to benefit from them.
Likewise, it is noteworthy that the decision recognized that there were reasonable indications to determine that with the registration of the trademark, acts of unfair competition could be carried out or facilitated in the analyzed market. Therefore, the cause of unregistrability of article 137 of Decision 486 was applied, which allows denying the registration requests of trademarks that meet such conditions.
Thinking outside the box, looking for evidence where it was traditionally not done, relying on public information tools and artificial intelligence market segmentation algorithms used by sales platforms, we met the stated objectives. We achieved a more transparent market for everyone and a satisfied client, without affecting their marketing budget for the rest of the year.
JUAN CARLOS TORRES IBARRA
August 2023
Intellectual Property Specialist Lawyer jctorres@buriticaabogados.com
