Bermeo successfully represented its client Consolidated Artists B.V. in opposition proceedings against Marroquinera S.A’s trademark applications for figurative trademarks M H MARIO HERNANDEZ comprised of the words MH, MARIO HERNANDEZ and a UNICORN DESIGN.
In March 2018 the Ecuadorian Intellectual Property Office (IEPI) confirmed its earlier decision and held that the applied trademark would be infringing the combination of two earlier trademark registrations, the first one representing solely a figure of a unicorn and the second one H.E. HOMINI EMERITO.
The Ecuadorian IP Office decided that “for the assessment of similarity the logos of two earlier trademarks have to be combined.” While analyzing the earlier marks one by one the likelihood of confusion might not be so evident. The applicant claimed that they had prior rights over the words MARIO HERNANDEZ and had the right to extend their protection. However, the combination of the initials M H above the words MARIO HERNANDEZ was similar to the use of the initials H.E. and HOMINI EMERITO protected by Consolidated Artists B.V. the addition of a UNICORN between the first initials was also an infringement of Consolidated Artists B.V.’s UNICORN design.
Thus, the Ecuadorian IP Office held that the proposed mark was confusingly similar to the combination of the two registered marks and therefore there was a likelihood of confusion among consumers.
Consolidated Artists B.V. is a company designing, manufacturing and marketing clothing and accessories for men, women and children and is well-known especially for fashion stores of MANGO group where the products under H.E. HOMINI EMERITO trademarks are sold.Not even the different classifications were able to amend this conclusion as it was held that products applied in class 18 – leather and animal skins – were related and of a rsimilar nature to the products protected by earlier trademarks in class 25 – shoes, clothing and hats – since they are sold in the same premises, advertised in the same specialized media, and because leather also serves as raw material for clothing, footwear and hats.