INTA's Trademark Reporter Montenegro case summary - Generic (Intel Corporation)

By Jasna Jusic, published in the March/April 2012 edition of the IAR Trademark Reporter

In September of 2008, Intel Corporation filed an application with the Intellectual Property Office of Montenegro (IPO) to register the word mark INTRU for goods in Class 9 (computer software, three-dimensional (3D) animation software, 3D animation process technology software, etc.) and Class 41 (entertainment services, namely, production of motion pictures, videos and films, etc.).

The IPO issued an office action stating that the mark’s general appearance did not enable the goods/services to be distinguished in the course of trade and that the mark was customary for designating a given type of goods in Class 9. In other words, the IPO found that the mark was nondistinctive and generic. The IPO stated that the word mark INTRU was a term used for marking 3D technologies and therefore, as such, did not enable the goods in Class 9 to be distinguished in the course of trade.

In an extensive response to the Office action, the applicant stated that its mark was a fanciful term that could not be found in standard or technical dictionaries. Furthermore, the applicant invoked his copyright on an “INTRU 3D animation motion sequence” and his right to protect INTRU as a distinctive element of this copyright’s name. At the same time, the applicant pointed out that the content of the motion sequence was developed through animation technology, but that the mark itself did not represent new technology. Moreover, the applicant disclosed his intention to develop other products under the applied-for mark, such as home videos, video games, etc., and has, to that end, applied and registered the mark in over 130 countries. Finally, the applicant noted that the mark had been presented to the public for the first time in 2008, in a commercial for the animated movie Monsters vs Aliens, during SUPER BOWL XLIII. The applicant argued that it was impossible in such a short time for the mark to have lost its distinctiveness and become generic for 3D technologies.

On April 7, 2011, the IPO accepted the applicant’s arguments and invited the applicant to pay the registration fees.

The case shows the lack of knowledge and lack of experience of the examiner in a new jurisdiction and in an even younger IPO, established only in 2008. This is not an isolated case but a relatively common occurrence in Montenegro.