RELEVANT CASES OF TRADEMARK INFRINGEMENT IN PARAGUAY

1. RELEVANT CASES OF TRADEMARK INFRINGEMENT IN PARAGUAY November 2006 1- Quiksilver 2- Oakley 3- Chanel 4- Casio 5- Nike 6- Livestrong

2. QUIKSILVER One hundred thousand wrist watches infringing the QUIKSILVER brand were detected in a container.

3. The infringer obtained the registration of the word mark QUIKSILVER in Paraguay in Class 14 in 1991, almost 3 years before the brand was registered in its country of origin (Australia) in Class 14.

4. Without a registered brand in the name of the plaintiff QS HOLDINGS, initially there was no legal basis for the seizure of the infringing merchandise.

6. In addition to the QUIKSILVER word mark, the seized wrist watches also had the wave and mountain design which is a QS HOLDINGS logo, which was still not registered in Paraguay.

8. Apparently there was no infringement since the word mark and the design should be registered in the name of the plaintiff.

9. However, the plaintiff QS HOLDINGS did have a registration of the device mark heart design in Class 14 granted in 2003.

10. The wave and mountain design printed on the wrist watches were nothing less than half of the heart design, but seen from a different angle. Therefore, in order to seize the counterfeit wrist watches, the statutory offence was “fraudulent imitation”.

11. OAKLEY In a customs control, a shipment containing 41,000 sunglasses was detected, with an elliptical imprint on the frame, registered as a device mark in name of the plaintiff OAKLEY INC.

12. Even though the sunglasses had neither the OAKLEY brand nor label with the elliptical design, the District Attorney considered that the imprint on the frame of the counterfeit sunglasses would be used to place a label of the aforementioned design, so the shipment was seized and destroyed.

14. CHANEL In the same shipment as in the previous case, 34,000 sunglasses were also detected infringing the famous CHANEL brand, with two interlocked circles attached to the frame.

20. An expert witness testimony concluded that the two interlocked circles caused confusion with CHANEL’s legitimate products which are identified with the interlocked CC, registered in the name of the accuser CHANEL SARL.

21. Therefore, based on the “fraudulent imitation” statutory offence, the District Attorney ordered the seizure of the shipment, which was subsequently destroyed.

22. DESTRUCTION OF THE GOODS SEIZED

23. CASIO CASIO detected trading in the Paraguayan market of counterfeit F- 91W wrist watches and of various models of electronic calculators, but without a brand or bearing brands which were neither similar nor identical to CASIO.

26. Therefore, applications for registration of the Industrial Designs for the calculators and for the F-91W wrist watches were filed and obtained.

30. Once the registrations were granted, various raids took place in shops, which resulted in the seizure of 500 counterfeit electronic calculators. This action enabled the seizure and subsequent destruction of numerous infringing shipments.

40. Afterwards, a shipment of 16,000 wrist watches infringing the industrial Model F-9IW registration was detected in a container, leading to their seizure.

43. Both shipments were later destroyed based on the legislation regarding Industrial Models and Designs and the Criminal Code.

45. NIKE - 90 NIKE detected shipments of sports shoes with the 90 in circle brand, which was not registered in Paraguay.

47. Consequently, the registration application was filed and once granted, a shipment of 2,100 soccer balls with the 90 in circle brand was immediately detected and seized, which marked the beginning of the struggle against piracy of this line of products.

50. NIKE - ALA A shipment of 33,000 black and white interlocking rubber bracelets, symbolizing the struggle against racism, was detected.