Colombia’s Superintendence of Industry and Commerce (SIC) has granted Diego Alejandro Cuéllar Nieto the registration of the mixed trademark “Coco Hondo” for products in Nice Classification class 30, including coffee, ground coffee, roasted coffee beans, and chocolate. The application was filed under the provisions of the Andean Community’s Decision 486, specifically addressing trademarks and their protection.
The decision came despite opposition from Fábrica de Especias y Productos El Rey, which argued the mark could cause confusion with its own portfolio, including the well-known “El Rey” brand. El Rey based its opposition on the grounds of similarity between the marks and the protection of its notoriously known signs, as outlined in literals a) and h) of Article 136 of Decision 486.
El Rey claimed “Coco Hondo” incorporated a crown, evoking royalty and potentially leading consumers to associate it with their “El Rey” and “Real” trademarks. They also argued that allowing both marks could weaken the distinctiveness and prestige of their brand portfolio, which includes a range of spices and related products.
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The SIC acknowledged a similarity between the marks due to the crown symbol. However, it emphasized the need to evaluate the marks in their entirety and sequentially. The SIC determined that the additional elements in “Coco Hondo” created a sufficiently distinct impression, reducing the likelihood of confusion or association with El Rey’s marks.
While recognizing “El Rey”‘s established reputation for spices in class 30, the SIC concluded that this notoriety alone wasn’t enough to block “Coco Hondo”‘s registration. The SIC dismissed El Rey’s opposition and granted Diego Alejandro Cuéllar Nieto a 10-year registration for the “Coco Hondo” trademark.
