Laura Patiño. IP Business management and training. PONS IP Colombia
The recent decision by the Superintendency of Industry and Commerce regarding the application to register the mixed trade mark V Vittorina Caffé has once again placed the spotlight on an interesting issue in trademark law: the use of widely used graphic elements within the same product category.
The case arose from an opposition filed by Fábrica de Especias y Productos El Rey S.A., the proprietor of the trade mark “EL REY”, which is widely recognised within the market for goods in Class 30 -condiments and foodstuffs-. The opposition argued that the use of a crown within the mark applied for evoked concepts associated with royalty and could lead to a likelihood of confusion or association with its family of trade marks.
However, although the SIC recognised the existence and protection of the EL REY family of trade marks, as well as the reputation of this sign in the Colombian market, the decision also addressed a particularly interesting aspect from a trademark perspective: commonly used graphic elements, which is the focus of this article.
The authority concluded that the image of a crown, on its own, could not be regarded as distinctive within Class 30, as it is a graphic element widely used in the food sector. In its ruling, the SIC even cites various registered trade marks that incorporate crowns or visual references to royalty in order to distinguish similar products.
The distinctive value of common elements
One of the most significant aspects of the case is that the decision serves as a reminder of a fundamental principle of trademark law: commonly used elements tend to have limited distinctive character.
In other words, when a symbol, word or concept appears frequently within a category, it becomes more difficult to claim absolute exclusivity over it. This is especially true in industries where certain visual elements are frequently used to convey specific attributes to consumers.
In the food sector, for example, it is common to find crowns, shields, ribbons or laurel wreaths as part of a trade mark’s graphic identity. In the healthcare sector, blue and green colours, crosses and clean fonts associated with trust and well-being are common; in technology, minimalist designs, simple fonts and geometric symbols that evoke innovation and connectivity predominate; in the agro-industrial sector, leaves, mountains, seeds and shades of green or earth tones are often used to convey natural origins and sustainability; in fashion and perfumery, monograms and crowns predominate; while in beers and spirits, laurel wreaths, ribbons and graphic styles abound, seeking to convey tradition and quality.
This does not mean that companies should avoid graphic elements of this type entirely. In fact, many common elements help to quickly express product attributes or align with consumer expectations within a specific category. The challenge lies in how these elements are combined with other distinctive features capable of establishing a unique identity in the market.
Another interesting aspect of the decision is that it thus reaffirms the approach to be taken when comparing mixed trade marks, namely by considering them as a whole rather than analysing each of their components separately. The SIC pointed out that consumers generally perceive trade marks as a whole and do not break down each element on their own when making purchasing decisions. Therefore, although two signs may share certain graphic elements, the distinction does not arise from a single symbol, and the examination must take into account the names, visual composition, typography, colours and overall structure.
Lastly, although the SIC rejected the argument regarding the crown and exclusivity over concepts associated with royalty, it refused to register V Vittorina Caffé for a different reason: the similarity of phonetics and spelling to trade marks previously registered in class 30, DON VITTORIO and DON VITTORIO SELECTO.
According to the ruling, the word marks “Vittorina” and “Vittorio” bear significant similarities in terms of name and they cover identical goods within Class 30, which could indeed give rise to a likelihood of confusion in the market.
Beyond the specific outcome, which may vary from case to case depending on the circumstances, this decision offers a number of useful insights for those developing trademark strategies.
Firstly, common graphic elements can be useful tools for communicating trade mark attributes and connecting with a product category, but they will not always be sufficient, on their own, to build strong distinction in the market.
The second point is that the word element of a trade mark remains one of the most important assets in a differentiation strategy, particularly in sectors where consumers order products verbally or find it easier to remember word elements than graphic elements.
Thirdly, we must not overlook the importance of carrying out prior art searches that take into account all the elements that make up the trade mark before filing an application. In some cases, potential risks may arise not only from similar graphic elements, but also from phonetic or conceptual similarities with previously registered trade marks.
Lastly, in an environment where many industries share similar visual styles, true distinctiveness is often found in the details and in the overall consistency of the trade mark. Rather than simply adopting a common graphic element, the challenge lies in ensuring that the trade mark as a whole is recognisable, consistent and distinct within the market.
