The Council of State of Colombia has just issued a ruling allowing the Chinese company BYD (Build Your Dreams) to continue using their logo in the Colombian market, despite its similarity to the logo by the German car manufacturer BMW.

 

Through the ruling, the State Council confirmed a decision by the Superintendence of Industry and Commerce (SIC), authorizing the registration of the BYD sign, awarded in 2005 to the representative in Colombia of the Chinese company that distributes EVs from that country. This action ended the dispute between BMW and BYD in Colombia.

The First Section of Colombia's State Council was responsible for studying the demand made by the company BMW against the resolution 020 466 of August 24, 2005 by the Superintendence of Industry and Commerce (SIC), arguing that it had allowed the registration of a visual trademark that is similar to the BMW's one even in the blue, black and white colors, which is prohibited by the Andean Community rules that prevent the registration of such marks.

In its application, the German company said that the consumer, when seeing both brands, would surely think they were from the same manufacturer, harming the interests of the German trademark. It added that BMW had been previously registered in Colombia.

However, the Council of State found that BMW and BYD can coexist in the market because the two brands do not produce a likelihood of confusion about their commercial origin, since they are different signs, and it would be highly unlikely that a specialist consumer buying a car with the BYD brand would think it is the BMW brand, or vice versa, because in such cases the purchaser is thoroughly familiar with the commercial origin of the product.

From the decision, the company from China was permanently authorized to distinguish electric vehicles, motor cars, automobiles, automobile tires, engines for land vehicles, bodies of automobiles, motorcycles, bicycles, aircraft and boats in the Colombian market, which according to the Nice Classification are goods from Class 12.

The SIC had previously been opposed to the claims of an action for annulment by the attorneys for the company BMW  noting that these two brands only match on the initial letter B, which would prevent any risk of association to its business origin, and that the colors black, white and blue that are shared by the two signs could not be appropriated exclusively by any company because they are primary colors.
 

Finally, in its ruling, the State Council endorsed the arguments put forward by the SIC, arguing that the sign meets the requirements of Article 134 of Decision 486 of the Andean Community Commission of distinctiveness and of being represented graphically.

 

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