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Marks With Names of Famous People

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[1] 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  [2], which was developed in Chile by a teacher, Yohana Agurto[3]. In this case, for example, the actor’s last name was used and combined with other words such as “Miel”[4] 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

Trademark Cancellation for Lack of Use, A Strategy Not Always Reliable

The use of the trademark is the main obligation acquired by the owner, something that is not necessarily fulfilled, especially when the Peruvian Trademark Law, in contrast with the Anglo-Saxon Law, its constitute and obey to the principle of the registration, which means that it is not require that the trademark be in use in order to earn the registration, allowing the economic agents to get the registration of trademarks that have never been or will never be use or will only have a temporary use.

For this reason, in many legislations of the world is regulated the trademark cancellation for lack of use, which will allow that economic agents with real intention of use the trademark to obtain the registration. The cancellation for lack of use is also a means of defence for oppositions and one of the most used strategies to avoid possible denials for the existence of identical or similar trademarks already registered.

In our legislation, Article 165 of Decision 486, Common Regime on Industrial Property of the Commission of the Andean Community, states that: “at the request of an interested party, the Competent National Office shall cancel the registration of a trademark that, without justified reason , had not been used by its owner, by a licensee or by another person authorised to do so in at least one of the Member Countries, during the three consecutive years preceding the date on which the cancellation action was initiated “(total cancellation). It also states that “when the lack of use of a trademark only affects one or some of the products or services for which the trademark is registered, a reduction or limitation of the list of products or services included in the registration shall be ordered, eliminating those for which the mark had not been used; for this, the identity or similarity of the products or services must be taken into account. ” (partial cancelation).

It is precisely because of the complexity in the interpretation of the partial cancellation, that the Trademark Office of the National Institute for the Defence of Competition and the Protection of Intellectual Property (INDECOPI) had to issue precedents of mandatory observance, since in this modality not only It will take into account the suitability of proofs of use presented by the owner, but also the identity or similarity of the goods and / or services distinguished.

The first precedent regarding Partial Cancellation, was Resolution No. 1183 -2005 / TPI-INDECOPI, which partially cancelled the registration of the Trademark “PETALO”, which distinguished “toilet paper, paper towels, napkins and paper handkerchiefs, cleansing paper, toilet paper and similar and other articles” of class 16 of the International Nice Classification, limiting it to distinguish only “toilet paper “.

The criteria established by the Office at that time, for the analysis of the identity or similarity of the goods and services were the following:

If the use of the trademark is proven for a good or service that was specifically detailed in the list, the registration for that specific good or service will be kept.

If the use of the trademark is proven for a good or service that was not specifically detailed in the list, but belongs or is similar to the other goods or services included in a genre that was specifically described in the list, the registration for that genre will be kept.

This precedent was modified by the second and current precedent, which is Resolution No. 2076-2016 / TPI-INDECOPI, which partially cancelled the trademark “CORONA”, which distinguished “Exclusively hand tools” of class 08, limiting it to distinguish only “bows for butcher”.

In the first instance, as the owner had demonstrated the use of the trademark for “bows for butcher”, a product that was included in the “hand tools” genre, the cancellation was declared UNGROUNDED. However, the petitioner appealed claiming that as the use of the trademark was only demonstrated for “bows for butcher”, but nor for hand tools in general, the trademark should be partially cancelled, limiting it to distinguish only that specific good.

This argument, clearly simple but very strong, led the office to add a new criteria since in the practice it had been noted too, that in not all genres the products or services included are similar. For example, whiting the products include in the genre of “hand tools” of the class 08, it can be found “nail files” and “side arms”.

In this regard, the Court established the following:

If the use of the trademark is proven for a good or service that was not specifically detailed in the list but is included in a genre that was specifically described in the list, however it is not similar to the other goods of services of that genre, the registration will be kept only for that specific good or service.

This decision was very favourable for the petitioner, who could register in his favour the trademark “CORONA” to distinguish “exclusively nail clippers”, of the class 08, which had been denied in the first instance due to the existence of risk of confusion with the registered trademark “CORONA” that distinguished “only hand tools”, of the class 08.

In the examination of registrability, at first it was determined that besides that the trademarks shared as only relevant denomination the word “CORONA”, which generates phonetic similarity, there was also a link between the products since nail clippers are included in hand tools. However, once the trademark was partially cancelled and limited distinguish only “arches for butcher”, this link ceased to exist and the applicant was able to obtain in the second instance the registration of the trademark “CORONA” to distinguish “exclusively nail clippers”.

This case makes us questioning, is the cancellation the most reliable strategy to obtain the registration of identical or similar trademarks that are already registered on behalf of other owners? Would not this be misleading to consumers? To answer these questions, it is important to point out that our trademark office tends to prevail the rights of the consumers over any other, and that is why the examination of registrability regarding the linking of products or services is very strict, even more if they are in the same class and / or genre. In addition, because of the specialty principle, for which the trademarks only protect those goods or services for which they were registered, the coexistence of identical or similar is possible as long as there is no link between their goods or services.

For example, in Resolution No. 0007548-2018 / DSD-INDECOPI, issued on May 20, 2018, the application for registration of the trademark “RAE” to distinguish exclusively “underwear for men, boys, girls and women” of the class 25, was denied due to the existence of trademark “RAE” and device, registered on behalf of another owner to distinguish “Only bras” of the class 25.

The registered trademark “RAE” and device, which in the beginning distinguished: “clothing, footwear, headgear”, was subject of a cancellation action started by the applicant almost at the same time of his trademark application, as a strategy to obtain the registration. However, the owner managed to prove the use of his trademark for “bras”, a product that belongs in the genre of “clothing”, therefore the authority in the second instance applied the mentioned precedent and decided to partially cancel the registration, limiting it to distinguish “only bras”.

As we see, unlike the case of the trademark “CORONA” this partial cancellation was not favourable for the applicant, since the products that remained in force were linked to the products of his requested trademark, which is why his application was denied.

In conclusion, although this precedent is debatable, it should not be taken as an incentive for the coexistence of identical and similar trademarks with different owners, which would create a risk of confusion for consumers, but rather as a way of reflecting a more accurate reality of the use of the trademark, favouring the fair competition in the market.

Finally, as not all of us have the luck of the applicant of “CORONA”, before starting a cancellation it is always advisable to do market studies of the trademark, because even though it means extra expenses, in the future it helps us avoid that, like the applicant of “RAE”, our strategy turns out a failure.

Author: Kelly Sánchez – IP Lawyer
Law firm: OMC Abogados & Consultores