{"id":4270,"date":"2020-07-02T20:33:52","date_gmt":"2020-07-02T20:33:52","guid":{"rendered":"https:\/\/mersanlaw.com\/?p=4270"},"modified":"2025-06-30T22:20:58","modified_gmt":"2025-07-01T02:20:58","slug":"trade-dress-in-paraguay","status":"publish","type":"post","link":"https:\/\/www.mersanlaw.com\/en\/blog\/el-trade-dress-en-paraguay\/","title":{"rendered":"Trade Dress in Paraguay: A Substantial Shift in Case Law."},"content":{"rendered":"
\n\t\t\t\t
\n\t\t\t\t\t
\n\t\t\t\t
\n\t\t\t\t
\n\t\t\t\t\t\t\t\t\t\t\t\t\t\t\t\"\"\t\t\t\t\t\t\t\t\t\t\t\t\t\t\t<\/div>\n\t\t\t\t<\/div>\n\t\t\t\t\t<\/div>\n\t\t\t\t<\/div>\n\t\t
\n\t\t\t\t\t
\n\t\t\t\t
\n\t\t\t\t
\n\t\t\t\t\t
\"Lilian<\/figure>

Written by Liliana Rosanne Nolan, Associate<\/h3>

\u2709\ufe0f liliananolan@mersanlaw.com<\/p><\/div><\/div>\t\t\t\t<\/div>\n\t\t\t\t<\/div>\n\t\t\t\t

\n\t\t\t\t
\n\t\t\t\t\t\t\t
\n\t\t\t
<\/div>\n\t\t<\/div>\n\t\t\t\t\t\t<\/div>\n\t\t\t\t<\/div>\n\t\t\t\t\t<\/div>\n\t\t\t\t<\/div>\n\t\t
\n\t\t\t\t\t
\n\t\t\t\t
\n\t\t\t\t
\n\t\t\t\t\t\t\t\t\t

When we think of brands, we generally most of us imagine a specific, distinctive name, image, logo, or label that we attach to a product or to the advertising of a service, giving it a distinctive character\u2014a seal of quality and guarantee\u2014so that we can distinguish our products and services from those of third parties and competitors.<\/em><\/p>

But the term \u201ctrademark\u201d goes beyond a simple name or a mere label, encompassing much more, including various shapes, colors, sounds, and even three-dimensional objects (three-dimensional trademarks) and \u201ctrade dress\u201d\u2014that is, the elements that make up a product\u2019s external appearance, such as the shape of a package, a store\u2019s ambiance, the fonts used, etc.<\/p>

In fact, the definition provided by Paraguay\u2019s Trademark Law, Law 1294\/98, is quite broad, defining \u201ctrademark\u201d as: \u201c\u2026all signs that serve to distinguish goods or services. Trademarks may consist of one or more words, slogans, emblems, monograms, seals, vignettes, or reliefs; names, fanciful terms, letters, and numbers in distinctive shapes or combinations; and combinations and arrangements of colors, labels, containers, and packaging. They may also consist of the shape, presentation, or packaging of the goods or their containers or wrappings, or of the means or place of sale of the corresponding goods or services. This list is merely illustrative\u2026<\/em>\u201d\u00b9<\/p>

So, a brand can consist of a word, a slogan, or the arrangement of colors, labels, packaging, and other elements; the list includes for illustrative purposes only<\/strong>, based on this, we can conclude that the meaning is broad and not restrictive, and that we could consider a myriad of signs which, by meeting the characteristics that every \u201ctrademark\u201d must have\u2014namely, being distinctive\u2014could be registered and protected as a trademark.<\/p>

In this regard, legal doctrine generally accepts that the term \u201ctrademark\u201d can be understood to encompass various distinctive and original signs, such as embossed designs, advertising slogans, combinations of letters or numbers, containers, packaging, and even the shape of buildings<\/em>.<\/p>

In our country, the doctrine of trade dress\u2014or the acceptance of non-traditional marks\u2014was not and continues to be poorly accepted by the authorities at the National Intellectual Property Office, and in countless cases, sound marks, color combinations, packaging, and building shapes, among others, have been rejected.<\/p>

SUPREME COURT OF JUSTICE DECISION NO. 227: A Shift in Legal Doctrine?<\/h5>

Notwithstanding the foregoing, the Supreme Court of Justice, in a recent judgment issued on June 2, 2020<\/a>, it reversed all previous provisions and, for the first time, allowed the registration of the combination and arrangement of colors applied to a motor vehicle.<\/p>

In fact, the Paraguayan Touring and Automobile Club requested the registration of the term T A C Py CRANE<\/strong> (Design and Emblem in Color) with the following label:<\/p>

\"Grua<\/p>

In International Class 39, to cover \u201cRoadside Assistance and Towing Services<\/em>\u201d, thereby seeking to protect not the vehicle\u2019s design itself, but rather the combination and specific arrangement of the vehicle\u2019s colors. That application was rejected at various levels, both administrative and judicial.<\/p>

First, it was rejected by the Trademark Office; then, on appeal, by the General Directorate of Industrial Property; and finally, by the Supreme Court of Justice\u2014all of which ruled that the application did not meet the requirements for a trademark.<\/p>

In fact, the National Intellectual Property Office considered that the aforementioned application for registration fell under the prohibition set forth in Article 2, subsection \u201cc\u201d of the Trademark Law\u00b2, in that The car or vehicle presented as an original is not owned by the applicant in terms of its creation or production; therefore, the applicant cannot register or claim as his own something that does not belong to him\u2026.<\/em>\u201d<\/p>

The Supreme Court of Justice ruled otherwise. After analyzing the matter at hand, the Court issued the following ruling:<\/p>

  1. The applicant sought to register his design and logo in color, which is referred to in legal doctrine as \u201ctrade dress\u201d\u2026.<\/li>
  2. That, according to legal doctrine, trade dress consists of the set of elements that identify a specific product, service, or establishment and that allow it to be distinguished from those marketed by competing third parties. It constitutes the product's external appearance<\/strong>, such as the shape of the packaging, labels, colors, and others; and<\/li>
  3. That this would be permitted under Article 1 of Law 1294\/98, since that very article provides a broad definition\u2014neither restrictive nor exhaustive\u2014of what may constitute a trademark, provided that it is distinctive, original, and serves as a means for promoting products in the market and facilitating their purchase by consumers.<\/li><\/ol>

    This has brought about a significant change, reversal, and transformation in all aspects of the doctrine of trade dress and its acceptance in Paraguayan law. From now on, the provisions of Article 1 of Law 1294\/98 \u2014the Trademark Law\u2014regarding the registration of products and the protection of various signs that, while not traditional trademarks, may nonetheless be distinctive and enable consumers to distinguish a product or service from a specific individual or company from the rest.<\/p>

    \u00b9Law 1294\/98 \u2013 Trademark Law \u2013 Article 1: Article 1. Trademarks are all signs that serve to distinguish goods or services. Trademarks may consist of one or more words, slogans, emblems, monograms, seals, vignettes, or reliefs; names, fanciful terms, letters, and numbers in distinct forms or combinations; and combinations and arrangements of colors, labels, containers, and packaging. They may also consist of the shape, presentation, or packaging of the goods or their containers or wrappings, or of the means or place of sale of the corresponding goods or services. This list is merely illustrative.<\/small><\/p>

    \u00b2 Law 1294\/98 \u2013 Trademark Law \u2013 Article 2: The following may not be registered as trademarks: \u201c\u2026c) the usual shapes of a product or its packaging, the necessary shapes of the product or service in question, or those that provide a functional or technical advantage to the product or service to which they are applied;\u2026\u201d<\/small><\/p>\t\t\t\t\t\t\t\t<\/div>\n\t\t\t\t<\/div>\n\t\t\t\t\t<\/div>\n\t\t\t\t<\/div>\n\t\t\t\t<\/div>","protected":false},"excerpt":{"rendered":"

    Escrito por Liliana Rosanne Nolan, Asociada \u2709\ufe0f liliananolan@mersanlaw.com Cuando pensamos en marcas, por lo general, la mayor\u00eda imaginamos un nombre espec\u00edfico, distintivo o una imagen, logo o etiqueta, que anexamos a un producto o a la publicidad de un servicio, otorg\u00e1ndole una impronta, un sello de calidad y garant\u00eda, de manera a distinguir nuestros productos…<\/p>","protected":false},"author":1,"featured_media":4276,"comment_status":"open","ping_status":"open","sticky":false,"template":"elementor_theme","format":"standard","meta":{"_kad_post_transparent":"","_kad_post_title":"","_kad_post_layout":"","_kad_post_sidebar_id":"","_kad_post_content_style":"","_kad_post_vertical_padding":"","_kad_post_feature":"","_kad_post_feature_position":"","_kad_post_header":false,"_kad_post_footer":false,"_kad_post_classname":"","footnotes":""},"categories":[13],"tags":[],"class_list":["post-4270","post","type-post","status-publish","format-standard","has-post-thumbnail","hentry","category-blog"],"_links":{"self":[{"href":"https:\/\/www.mersanlaw.com\/en\/wp-json\/wp\/v2\/posts\/4270","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/www.mersanlaw.com\/en\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.mersanlaw.com\/en\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.mersanlaw.com\/en\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.mersanlaw.com\/en\/wp-json\/wp\/v2\/comments?post=4270"}],"version-history":[{"count":0,"href":"https:\/\/www.mersanlaw.com\/en\/wp-json\/wp\/v2\/posts\/4270\/revisions"}],"wp:featuredmedia":[{"embeddable":true,"href":"https:\/\/www.mersanlaw.com\/en\/wp-json\/wp\/v2\/media\/4276"}],"wp:attachment":[{"href":"https:\/\/www.mersanlaw.com\/en\/wp-json\/wp\/v2\/media?parent=4270"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.mersanlaw.com\/en\/wp-json\/wp\/v2\/categories?post=4270"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.mersanlaw.com\/en\/wp-json\/wp\/v2\/tags?post=4270"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}