MAGICJACK uses internet in its communication business as well as to defend its mark
Many people with family, friends or businesses that require them to have frequent telecommunication with people in the United States must already know the advantages of a USB device called MAGICJACK. Where is the “magic” of this device? In that allows calls to this country on an extremely affordable flat rate that is impossible to beat by any other phone service provider in the market today.
The MAGICJACK mark is commercialized in the United States since 2007 with great success and demand and is registered in said country in the name of magicJack LP in classes 9 and 38, as well as in Argentina, Canada, China and the European Union to distinguish the USB device that is intended to make phone calls within and outside the United States of America, by connecting it to a computer with internet connection. MAGICJACK has the www.magicjack.com website through which the product and its services became known worldwide. This popularity led to the arrival of the product to Peru, which was offered by individuals through various websites and later entered into the Peruvian market imported by four Peruvian companies (Telemax Peru, SAC Convergensia, Personal Products and Supercel) in the years 2008-2009.
On January 12, 2009, Avraham Moshe Rozenvasser of Israel applied for the registration of the mark magicJacktodistinguish telecommunication services in class 38, in Peru. MAGICJACK LP raised and opposition against this application on May 11, 2009, arguing that the applicant acted in bad faith having knowledge of the existence of the mark MAGICJACK because of its popularity on the web and also considering that for this reason it is a well-known mark and the applicant intends to associate his services to the fame and quality of the original products and services. Additionally MAGICJACK LP cited and attached therewith some jurisprudence it deemed applicable to the case and based its arguments on the provisions of Articles 136 paragraph a) and h), 137, 146, 224 and following of Decision 486, Article 6 bis and 10 bis of the Paris Convention and Article 7 of the Washington Convention.
In this opposition various pieces of evidence were filed, including a variety of prints of web pages, invoices of the goods imported in Peru and copies of the registrations of the mark in other countries. In the notoriety analysis of MAGICJACK it was determined that the evidence was insufficient to prove said notoriety. Likewise, it was determined that article 7 of the Washington Convention applied only to goods but not services. However, in the analysis of the provisions of Article 137 of Decision 486, the Peruvian Trademark Office (Indecopi) considered that there are reasonable grounds to infer that the sign was requested mediating bad faith and to commit, facilitate or consolidate an act of unfair competition, which was the basis to declare said opposition founded.
This case shows that even when a brand is not recognized as notorious, that does not exclude the possibility that it were known to the applicant and he acted in bad faith by trying to associate his products and / or services with one already internationally positioned. It was not necessary, in this case, for MAGICJACK LP to have registered its mark MAGICJACK in Peru to obtain a favorable resolution, however, the owner has already applied for registration of its mark in our country. MAGICJACK LP this time did not use Internet as an ally in his business, but as the source of evidence in defense of its legitimate industrial property.