Trademarks – An interesting case of confusion
By Mercedes Bullrich and Olivia Molina.
We´re all familiar with the famous Road Runner character, that fast, vivacious, bluebird that continually frustrates the coyote’s efforts to catch him, and his characteristic BIP BIP sound, owned by Warner Bros. Entertainment Inc. This is what the entertainment giant alleged when opposing the BIP BIP! trademark application.
What happened?
On April 26, 2016, a trademark application was filed for BIP BIP! – application no. 3498958 – to cover all services included in class 42 of the Nice International Classification. Warner Bros. Entertainment Inc. filed an opposition against said application, arguing that the mark applied for is confusingly similar to its trademarks registered in several countries, which include the words BIP BIP, BIP! BIP!, BIP-BIP, associated with the cartoon character Road Runner and the onomatopoeia of the sound he emits.
The comparison
As Warner Bros. expressed, the consumers not usually see brands side by side, but in different places and at different times. That is why they are shown below:
The mark requested by the applicants:
BIP BIP!
Warner Bros. Entertainment Inc.´s trademarks:
BIP BIP (Registration No. 349075 – Class 25 – Paraguay)
BIP-BIP (Registration No. 819976717 – Class 28 – Brazil)
BIP! BIP!
The National Trademark Office agrees that, graphically, the marks are identical. This analysis extends to the phonetic level and, to a minor extent, also to the conceptual level. The latter, because it considers that it could be understood as a horn and not related to the Road Runner character.
It concludes that the likelihood of confusion in one of the matching fields and its use are sufficient for the refusal of the trademark BIP BIP!
The following are the grounds on which the National Trademark Office based its decision to declare this opposition well founded on November 2, 2021:
1) The existence of confusing similarity in any of the fields of comparison, in this case the graphic field;
2) The confirmed use by the opponent of the character “ROAD RUNNER” and its onomatopoeia “BIP BIP” and the signs invoked, protected both by its registration (in the country and abroad) and by copyright;
3) The well-known reputation of the opposing sign;
4) The silence kept by the applicant for not having answered the opposition within the term provided by law.
For all these reasons, on March 4, 2022 the application for registration of the trademark BIP BIP! was rejected.
It seems that the Road Runner, once again, got away with it.
For further information please contact: mbullrich@ojambf.com.
