Holland & Knight Helps Colombian Oil Company Terpel Protect Brand in Trademark Dispute
BOGOTÁ (November 15, 2018) – Holland & Knight recently helped protect the brand of Colombia's leading oil and gas company, Terpel S.A., by successfully opposing the registration of a similar trademark from a drug company. Terpel owns 32 brands throughout Latin America related to gas stations and consumer and industrial products.
In February, Global International Medicine (GIM) applied for the registration of its pharmaceutical drug, Terpyl. Holland & Knight challenged the registration by arguing that even though the brands exist in different industries, GIM would improperly gain an advantage in the marketplace from the phonetic and orthographic point of view, because the Terpel family of brands is so well known in Colombia, Ecuador and Peru.
After an exhaustive analysis, Colombia's Superintendencia de Industria y Comercio (SIC) denied the drug company's request on November 1, determining that similarities between the two trademarks were likely to mislead consumers. The extreme "notoriety" and large amount of commercial activity of the Terpel brand was a major factor the SIC's determination.
Holland & Knight Partner Danilo Romero Raad represented Terpel in the matter and was assisted by Associate Bettina Sojo.