Tommy Bahama Group Inc, an american company was seeking to register their trademark ¨Tommy Bahama Relax Est. 1993¨ to identify men’s and women’s sportswear, activewear, denim, swimwear, accessories and footwear, as well as home furnishings in Colombia.

Their trademark was denied on the first and second instance by the Superintendencia de Industria y Comercio de Colombia (SIC). The institution stated that their decision was based on the similarity of the trademark with other brands like Tommy Hilfiger and Tommy Girl that are already register.

When the trademark was denied Tommy Bahama presented a document before the court, stating that the sign requested was fully valid for registration, and gave a couple of arguments, including proofs of markings for the office to grant the request.  The defendant attorney also advise that they should have into account that the trademark was being requested as a mixed sign.

Tommy Bahama’s attorney stated that, ¨Tommy Bahama Relax Est. 1993 are five words and numbers, while Tommy Hilfiger and Tommy Girl are made up of two words. Thus, orthographically the opposing signs necessarily imply in conferring extrinsic distinctiveness to each¨

Our Founder & CEO, Alvaro Ramirez Bonilla gave his legal opinion to Diario La República about this case, ¨The SIC is not doing a trademark analysis of the brands as a whole, the Tommy Bahama graphics are totally different from the Tommy Hilfiger brands¨.

After receiving the document from interested company, the SIC opted to carry out a new trademark analysis to resolve the lawsuit, but even though of the effort the final decision was still the same one, the trademark was denied.

Read more at: //