Trademarks – COLONIAL vs COLONIAL, identical, but distinct
By Amalia Prieto and Sol Baudino.
On November 3, 2021, the National Institute of Industrial Property (INPI), decided to declare unfounded the opposition formulated by CHOCOLATE COLONIAL S.A. (Op. N° 623.815) against the Trademark application 
submitted by RAMDEL S.R.L. in class 30.
Initially, RAMDEL S.R.L had applied for the aforementioned mixed trademark in order to protect the entire class 30, excluding coffee, tea, and chocolate, later he limited it to distinguish only ice cream, frozen desserts and bakery products.
CHOCOLATE COLONIAL S.A based its opposition on its trademark 
already registered in class 30. It also highlighted that its business began in 1925, and its main activity was always the manufacture of personalized chocolates and supplies for factories that produces “alfajores”, puddings, chocolates, and also for ice cream parlors, hotels, and restaurants.
On the other hand, it assured that the signs are identical, and that previously, there have existed negotiations between the parties, but they did not reach an agreement since the applicant did not accept the exclusion of bakery products that the opponent was requesting. According to their arguments, the granting of this trademark would generate an indirect confusion for consumers.
Meanwhile, the applicant RAMDEL S.R.L highlighted that its activity is the production and sale of ice cream, and they currently have twenty stores identified with the sign “COLONIAL”. At the same time, it argued that this conflict reduced exclusively to bakery products, so the principle of specialty has to be strictly applied: the opponent only provides chocolates for certain bakery products, it does not make them, therefore, they target different consuming publics (in one case manufacturers, and in the other consumer audience in general).
Thus, the INPI analyzed the arguments offered by the parties, and said that in order to analyze the existence or not of confusion between the signs, it took into account the adjective and objective circumstances of the case, since, from its simple transcription, their verbal part is identical.
Regarding the objective circumstances, it determined that the conflict focuses on the protection of “bakery” products, so the issue lies in analyzing whether or not the principle of specialty should be applied in this case, since, even though the products are within the same class, the opposite sign is intended to protect only “chocolates in general”
Although for the INPI there indeed exists a link between these products given that chocolate is often used to make various bakery foods, this per se does not prevent the possibility that both signs coexist peacefully. Established this, the INPI agrees with the applicant in the fact that the opponent does not make bakery products, but instead, it provides chocolates for the manufacture of bakery products.
Therefore, the INPI considered that the consuming public of the products sold by both parties were different: while CHOCOLATE COLONIAL S.A aims to the bakery products manufacters, RAMDEL S.A produces products that are sold in their own premises, and are destined for a general consuming public.
Accordingly, the signs can coexist and are not confusing for the public. It should be noted that although the signs are identical in their denominative parts -the logos do not have great originality-, the INPI determined the unmistakability of the signs taking into account the different consuming public that each company target, and we understand that the trajectory of the requested sign in the market must also have weighed in making the decision.
For further information please contact: aprieto@ojambf.com or sbaudino@ojambf.com.
