Esprimere, an Italian coffee shop, has registered their trade mark ‘PronTissimo’ (word mark) and their logo (figurative mark) with their national IP office. The company contacted local IP lawyers from Mexico, Venezuela and Colombia, since they are planning to expand to these three countries. Consequently, they applied for the registration of both trade marks in all three countries.
Esprimere had a franchise agreement with a Colombian enterprise, Cortico S.A., outlining the rights and obligations of the franchisor and franchisee within Colombian territory. Aiming to increase their attractiveness, Cortico hired a local artist to give their logo a makeover. Esprimere believes that this action breached their franchise agreement, consisted in an non-authorised use of Esprimere’s trade mark andconstituted, therefore, a trade mark infringement.