The movie ENCANTO by Walt Disney, tells the story of the Madrigal, a family that lives hidden in the mountains of Colombia, in a magical house in a wonderful place known as Encanto. The DISNEY ENCANTO nominative trademark was requested by DISNEY on June 24, 2020 and was granted until August of this year. Its delay in being granted was due to several requirements during the process, which are worth analyzing to consider whenever registering a trademark. 

It is ironic to think that just the film that has a Colombian family as its protagonist, from a company as large and recognized as Disney, presents so many problems to be registered, so here we will briefly explain the reasons for debate in the trademark registration process and we will give you some recommendations taking into account what we learned analyzing this very controversial request.

The importance of properly classifying the brand's products or services The first requirement on the part of the Superintendencia de Industria y Comercio (hereinafter SIC) occurred because some of the expressions within the description of the products in the classes are not covered by the class requested for registration.  

The Nice classification It is an international system that groups products and services into related categories for the purposes of registering trademarks. In addition, it is a limit for trademark protection, because the exclusive rights it confers only refer to the products or services. services for which the trademark was registered, which is known as the external limit of trademark protection. Therefore, it is possible that signs, regardless of their similarity, can coexist as long as they are registered for different classes.  

Recommendations: To classify a product or service, we must first go to the title of each class and then to the “alphabetical list” of each title to confirm the presence of the product or service that we want to identify within the Class.  
Usually, it is easy to determine which class each product or service belongs to, but there are cases in which there may be doubt about its location within a certain class, due to its varied components or multiple functionalities.

This is why aid criteria have been established, according to those used as a last resort and which characteristics are of greater importance, within which we suggest classifying a product "based on the predominant material" when it is composed of materials different, or classify a service “by analogy with other similar services that appear in the alphabetical list.” Exam of trademark registrability: Concept of brand family and principle of brand specialty.

Even without oppositions being filed, the SIC argued that there were similarities between the name ENCANTO and two mixed trademarks previously registered in two of the classes in which registration of the DISNEY trademark was requested and therefore, it did not grant registration in the classes. 41 (in which the film production and direction service is located) and 18, since their name contained the word “charm” and therefore makes the distinctive signs confusing. 
conceptualmente pues evocan una misma idea y por ello afirman que las marcas no pueden coexistir en el mercado sin generar confusión en el consumidor respecto a su procedencia empresarial.  

Faced with this, correctly and with strong arguments, the representative of DISNEY filed an appeal against the decision and requested the granting of the trademark in the classes in which it was not registered, stating that the requested trademark is part of the recognized DISNEY trademark family, the attorney explains that due to the trademark families generate a clear idea to the consumer about the origin of the products, it is evident that consumers, upon seeing the requested trademark DISNEY ENCANTO, will immediately relate it to its owner.  

The well-known character of the DISNEY brand is evident, not only worldwide, but also in Colombia, where consumers already recognize it as such. Consequently, when consumers observe the DISNEY ENCANTO brand, they will quickly relate it to other DISNEY brands, and it will be clear to them that the origin of the products is the company widely known to consumers, Disney Enterprises, Inc. 

Another of the strongest arguments explains that the brands in conflict have no competitive connection since they identify very specific products and services and are not intended for the same consumers. In that sense, they will not share the same market or the same marketing channels. By simply reading these products and services, it is possible to affirm that they are very specialized products and services that belong to different markets. The great lesson that this story leaves us is that no matter how big a company you are, it is essential to properly advise yourself when registering your brand.

AUTHOR
Laura Correa Contreras
Abogada Lyown Business