Pronovias S.A is a fashion and clothing company founded in Barcelona in 1922, which started as a family business. In 1964, the company revolutionized fashion by creating bridal fashion and making wedding dresses accessible to all women. Since the 1970s, it has a network of 50 franchises and more than 4,000 sales points in over 100 countries. In 2017 the investment fund BC Partners bought the company, to start its expansion and growth plan. In 2018, Nicole Fashion Group joined the Pronovias Group, as Ladybird did, which joined the team in 2019.
SAN PATRICK S.L., applied at the National Intellectual Property Office in Paraguay for the trademark PRONOVIAS to protect clothing, footwear, headgear; wedding and party dresses in Int. class 25.
It was rejected by the Trademark Office on the grounds that it constituted a generic and descriptive trademark with respect to the class which it was intended to protect.
SAN PATRICK filed an appeal for reconsideration with the Trademark Director to reverse the rejection but it was upheld. Consequently, it appealed the Resolution No. 1124 dated June 22, 2018 in order to be studied by the General Directorate of Industrial Property which studies the cases in the Second Administrative Instance.
PROHIBITION OF THE LAW NO. 1294/98 OF TRADEMARKS OF GENERIC AND DESCRIPTIVE SIGNS
Article 2 of the Trademark Law 1294/98 establishes the prohibitions in order to refuse the registration of a trademark and one of it refers to those signs which are the generic name or designation of the product or service which is intended to be protected, as well as those which may designate or describe a characteristic of the product or service.
TRADEMARK LAW 1294/1998
Article 2. May not be registered as trademarks: [...] (e) those which consist entirely of a sign which is the generic name or designation of the product or service concerned, or which may serve in trade to designate or describe a characteristic of the product or service; […]
THE GROUNDS OF THE APPEAL
The PRONOVIAS trademark undoubtedly constitutes a name or word of fantasy. It does not directly or indirectly designate the goods which it intends to protect, much less indicate anything in respect of the products in Class 25.
The concepts of generic, designatory or descriptive were confused since the PRONOVIAS trademark evokes an idea of the products offered by the brand being its main objective, and therefore PRONOVIAS constitutes a fanciful expression and not a generic designation. This taking into account that evocative trademarks are denominations formed in an arbitrary manner which create an idea of the product or suggest its nature or usefulness, and which, however, do not lead directly and immediately to a characteristic of the product or service.
The PRONOVIAS trademark enjoys the status of a notorious brand and that has transcended from Barcelona to several countries around the world including Paraguay where it is the most recognized brand in the world of bridal fashion, positioning it within the world’s most famous brands.
The trademark has been granted not only in its country of origin but in several countries around the world in the international classes 25 and 35 respectively, demonstrating the ability of the PRONOVIAS trademark to distinguish products and relate them to their business origin.
No oppositions were filed by third parties since it holds a degree of notoriety and distinctiveness that properly positioned it in the market and does not affect third-party rights.
COMMENTS ON THE RESOLUTION ISSUED BY THE GENERAL DIRECTORATE OF INDUSTRIAL PROPERTY
The General Directorate of Industrial Property issued Resolution No. 605 by which it revoked the resolution issued by the Trademark Office. The resolution is the result of a careful analysis of all the allegations and evidence in the respective file.
It outlines the following observations:
“That, making an exhaustive search and investigation, both in Internet search engines, as well as in translators, dictionaries, and others, we see that, as presented, they do not have a translation or synonym per se. However, by breaking down and separating the words ‘PRO’ and ‘NOVIAS’ (BRIDES) into a contextual synonym, it would be “A FAVOR DE NOVIAS” (“FOR BRIDES”) and the application is filed for products in Class 25”.
“That, when considering its meaning we understand that it would be impossible to classify it within the prohibitions set forth in Article 2(e) due to the fact that it is not generic of class 25, since it is not a necessary designation of any product to describe such class. Nor does it mark or describe any characteristic of the products, and the conjunction of these words necessarily becomes an arbitrary term for class 24, at most, evocative”.
It continues stating:
“That on the other hand the denomination PRONOVIAS has acquired a status that may allow its position among the notorious trademarks, since it is widely known in the sector”.
And ends by stating:
“That, disregarding the thesis sustained by the lower office, and subtracting it from the analysis, it only remains to see if the application in question refers to a denomination which is capable of maturing in the registry. Therefore, discerning and encompassing its characteristic elements, we observe that the application is composed of a few words, which, as a whole, are creative and insightful, and thus novel and original, and consequently meet the requirements set out in Article 1 of Law 1294/98, and do not fall within any of the prohibitions stated in Article 2 of the same law”.
SAN PATRICK used the mechanisms provided by the trademark legislation in force in Paraguay for the defense of its intellectual property rights.
The review of decisions in higher instances are effective tools in order to correct interpretations that may be detrimental to a rights holder who, because of having an original and arbitrary trademark, cannot expand the protection.
It is undeniable that the PRONOVIAS trademark is notorious and globally recognized a fact that was considered for the revocation of the appealed decision.
The observations issued by the General Directorate of Industrial Property were correct, in which the original and distinctive character of the PRONOVIAS trademark was fully recognized, and its status as a notorious trademark was declared