Around the universe of trademarks and its legal figures, sometimes there are very peculiar cases regarding the registration of the same and the reasons why they were not admitted as such. The office received the instruction to register the trademark "PERFECT TRADING COMPANY", from the owner with the same name, subsequently, the internal legal procedures were followed, until the competent authority (General Directorate of Intellectual Property of Honduras), notified a ruling regarding the refusal of registration, because the trademark "PERFECT STOP" was already registered.
From that point on, our legal team used the legal instruments to debate and object to the decision made by the Management, since we saw with good eyes that at a visual, grammatical and phonetic level there are no clear similarities between the word "TRADING" and "STOP".
In accordance with the law, we objected to the resolution by means of a Statement of Objections, Motion for Reposition and Appeal, and we were notified of all the actions and arguments raised. A formula used by the doctrine, as well as the institution, is the following: "mislead the consumer", since it is perceived that in the different commercial platforms the words "STOP" and "TRADING" are similar.
As we can see, by simple phonetic listening, we can deduce that, in the first instance, Honduras, a Spanish-speaking country, with a language very marked by a neutral Spanish, can differentiate in the English language, the phonetic difference between "TRADING" and "STOP", which obviously expresses a very clear differentiation between pronunciation and syllables, according to the English language.
Such a basic explanation did not help the competent authority, which denied the normal course of the administrative procedure in all legal instances.
We do not know the real reasons why the trademark was denied, in our opinion, being a law firm with vast experience in Intellectual Property matters, we did what the law allowed us to do. We did not go to court, that is to say, to the contentious-administrative, since the client did not give instructions regarding this action that the law still gave us; although seeing how the institution acted, it was most likely that it would also be denied in court.
This case served as a lesson to the firm on the disparate criteria used by the DIGEPIH on the granting of trademark certificates.
From the logical reasoning of the authorities and staff, we can deduce that, as users and clients' attorneys-in-fact, we must be attentive to these resolutions and collect certain criteria of foundation, in order to establish administrative jurisprudence and resort to it, in case some similar cases arise.
Applicable laws: 1) Industrial Property Law, 2) Administrative Procedure Law, 3) Commercial Code, 4) Law of Simplification Administrative Law.
