The exclusive use of a trademark is granted to its owner upon registration, and the owner is also given the power to forbid anyone from using the trademark without their permission or approval.
According to Article 134 of Decision 486, Common Regime on Industrial Property, it is established that “(…) any sign that is suitable to distinguish products or services in the market shall constitute a trademark.” Thus, signs capable of graphic representation may be registered as trademarks, such as: “words or combination of words; images, figures, symbols, graphics, logos, monograms, portraits, labels, emblems and shields; the sounds and smells; letters and numbers; a colour delimited by a shape, or a combination of colours; the shape of the products, their containers or wrappers; any combination of the indicated signs or means (…)” (Andean Community Commission, 2000).
In this sense, marks are incorporeal goods that can have a visual representation. With the exception of the restrictions outlined in article 135 of Decision 486, it is legal to employ spellings, figures, shapes, colours, and fragrances that are arbitrary and unrestricted for its composition, as stipulated by our legislation.
Having stated that, it is evident that someone who wishes to distinguish their goods or services on the market looks for many ways to make their mark, from invented words to words derived from names’ initials to pictures of animals, plants, and people, among other things. Because there is an endless variety and human creativity is likewise an unlimited variation, people can combine various elements to create the mark they desire for their goods or services.
But, what happens if a person in the midst of such creativity decides to register the name, pseudonym, image or whatever of a famous person as a trademark?
The Article 136 of our community legislation contemplates the relative prohibitions of registration that refer to those cases in which the registration of signs is denied because there are third parties with better rights. These prohibitions are based on the principle of risk of confusion, one of the fundamental principles of trademark law.
In what corresponds to this article, we will only refer to subparagraph e) of article 136 of Decision 486, which establishes a prohibition of registrability, which provides that it may not be registered as trademarks those signs that:
“e) consist of a sign that affects the identity or prestige of legal persons with or without profit, or natural persons, especially in the case of the name, surname, signature, title, hypocoristic, pseudonym, image, portrait or caricature of a person other than the applicant or identified by the relevant sector of the public as a person other than the applicant, unless the consent of that person is accredited or, if deceased, that of those who were declared his heirs;” (Andean Community Commission, 2000).
In this case, it is undeniable that if someone, a third party, wants to register a trademark with the name of a public or famous person, then they will have to prove that they have authorisation to do so, otherwise said application will be denied
For example, on December 16, 2015, the company SATTVICA S.A. filed the trademark MARADONA in Peru to distinguish products and services in classes 25, 28, 35, 38, 41 and 43. This trademark was rejected at first instance, because although documents were presented proving the authorisation of Diego Armando Maradona, the The Peruvian Trademark Office rejected the documents on the grounds that the express consent of the soccer player was not indicated in favour of the aforementioned company to register his last name as a trademark. An appeal for reconsideration was filed against this rejection, attaching a copy of the express consent of Diego Armando Maradona in favour of SATTVICA S.A. to register his last name as a trademark in Peru. Said appeal for reconsideration was declared founded and the trademark MARADONA was granted in classes 25, 28, 35, 38, 41 and 43 in favour of SATTVICA S.A.
The same would happen, for example, if a person, natural or legal, decided to register a trademark with the name Cristiano Ronaldo, CR7 or the image of the soccer player to distinguish energy drinks or protein drinks in class 32. That person would have to present the authorisation or consent of the soccer player Cristiano Ronaldo for such registration, otherwise it would be rejected because it would be considered that the identity or prestige of the soccer player is being affected.
It is worth saying that Cristiano Ronaldo has several marks of clothing, fragrances, among others, that have his name and it is not necessarily the footballer himself who requests them but third parties who have authorisation to do so.
And this is common, since many celebrities such as singers, athletes, models, venture into the commercial field, allying with companies to create and sell products such as clothing, footwear, perfumes, embodying their name on them, registering them as trademarks as a way of getting more profits, perhaps for personal marketing and in some cases they do so in order to avoid their use and exploitation by third parties, as a way of protecting themselves against those who want to benefit from their fame or prestige.
A very particular case that caught my attention and which I share in this article is that of the mark “Miel Gibson”, as it can be seen in the image , which was developed in Chile by a teacher, Yohana Agurto. In this case, for example, the actor’s last name was used and combined with other words such as “Miel” to allude to the product being sold, but at the same time evokes the name of the actor Mel Gibson, added to the use of his image taken from the film “Braveheart”, and the phrase at the top that evokes this film.
The creativity of this teacher is undeniable; however, we cannot ignore the fact that she is using the actor’s image and his name, without authorisation, as verified.
In our country, Peru, this is also common, there are cases where famous names are taken to distinguish products or services such as stores, beauty salons, clothing, among others.
In conclusion, can a third party use or register the name, image, pseudonym, etc. of a famous person as a mark?, yes, as long as he has authorisation to do so.
Author: Marietta Flores – IP Lawyer
Law Firm: OMC Abogados & Consultores