Feature Note / Alessandri Abogados Newsletter

Alessandri obtains milestone registration for Chilean National soccer team

25 April, 2019

Using the “secondary meaning” doctrine –distinctiveness of a trademark acquired by its profuse use in commerce– Alessandri IP team obtained the acceptance to registration of the Chilean National Soccer team badge.

 

For years the National Football Team has been using its current known badge, which contains an interpretation of the national emblem along with the wording “FEDERACION DE FUTBOL DE CHILE” (CHILE FOOTBALL FEDERATION).

Our firm oversaw the prosecution of this badge design before the Chilean Trademark Office (Inapi), who objected the application arguing that the sign was not intrinsically distinctive. They argued that the words “FEDERACION DE FUTBOL DE CHILE” corresponded to a sign formed by the word “FEDERACION” which, in the field of sport, is the organization whose main function is the regulation and management of sports; the words “DE FUTBOL”, which specifies the type of sport regulated and organized by the Federation (football); and finally the words “DE CHILE”, describing the geographical territory that makes up the scope of action of the Agency. Therefore, Inapi deemed this sign as descriptive and devoid of distinctiveness in connection with the pretended list of products and services.

After an efficient joint work with ANFP, Alessandri proved the profuse use of this trademark in the commerce, namely, in football jerseys, sports goods, merchandising, video games, etc. The strategy consisted in indicating that this trademark, despite its wording, had reached distinctiveness by its profuse use in commerce, what in trademark doctrine is named “secondary meaning”.

On March 27, 2019, Inapi issued its final decision upholding our arguments and ultimately declaring that the trademark consisting in the National Football Team badge met with the distinctiveness acquired by use requirement, therefore accepting the secondary meaning theory raised by our Firm.

Javier Aleuanlli S.

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