?TUBOSA? and ?TUBESA?

Corporation Tuberías y Prefabricados de Concreto S.A. applied to register the trademark TUBERÍAS Y PREFABRICADOS DE CONCRETO TUBESA S.A (words + design) to cover construction and repair of prefabricated concrete piping, services of class 37.

Corporation Tubos de Occidente opposed this trademark based on its combined trademark TUBOSA, previously registered to cover products of class 19, specifically, plastic piping.

Since the Trademark Office refused this registration, corporation Tuberías y Prefabricados de Concreto S.A. brought nullity action against this decision before the Colombian Council of state, who requested pre-judicial interpretation of the case from the Andean Court of Justice.

The Andean Court explained that, since the case involved combined trademarks (word + design), it was necessary to establish which was the element prevailing in each trademark (Andean Court of Justice, Proceeding 59-IP-2001. October 10, 2001).

The Council of State applied the interpretation, and ruled that the words were the prevailing element in both marks, and that the expression ?TUBERÍAS Y PREFABRICADOS DE CONCRETO S.A.? had to be eliminated, for it was the usual or descriptive way of identifying the entrepreneur, so an exclusive right in the same could not be granted.

The Council, then, compared only the words TUBOSA and TUBESA, and concluded that there were visual, conceptual and spelling similarities sufficient to confuse the consumers.

The fact that the products are complementary o capable of being used jointly, or one is a component or accessory to the other, is a clear indication of the similarity or relationship existing between them.

Consequently, the ruling of the Council of State was that the decision to refuse the registration of TUBERÍAS Y PREFABRICADO DE CONCRETO TUBESA S.A (combined) handed down by the Trademark Office was valid (Council of State, File 5958, May 23, 2003).