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Marks with Names of Famous People

OMC Abogados & Consultores Peru


The registration of a trademark gives the owner the right of exclusive use of the mark, in the negative aspect of this right, empowers the owner to prohibit third parties from using the mark without his consent or authorization.

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 color delimited by a shape, or a combination of colors; the shape of the products, their containers or wrappers; any combination of the indicated signs or means (…)” (Andean Community Commission, 2000).

In this way, marks constitute incorporeal goods that are capable of being graphically represented. For its composition, as indicated by our legislation, the use of spellings, figures, shapes, colors and scents that can be constituted arbitrarily, without any restriction, except for the prohibitions provided in article 135 of Decision 486, is valid.

Having said this, it is clear that a person who wants to identify their products or services in the market looks for different ways to create their mark, from invented words, words that come from the initials of names, graphics from animals, plants, faces, etc. The variety is infinite and the creativity of people is also infinite, in this sense they could make combinations of all kinds in order to obtain the mark they want for their products 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 authorization 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 authorization 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 favor 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 favor 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 favor 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 authorization 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 authorization 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 authorization, 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 authorization to do so.

 

[1] Nickname or pseudonym by which the Portuguese footballer Cristiano Ronaldo is known.

[3] Sena, Gustavo A. Use of names and images of third parties as a mark. Website: https://www.perfil.com/noticias/opinion/gustavo-sena-uso-de-nombres-e-imagenes-de-terceros-como-marca.phtml

[4] The word “miel” translated into English means “honey”.

OMC Abogados & Consultores



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OMC Abogados & Consultores

AddressAv. 28 de Julio N° 562 Interior E – Miraflores. Lima, Perú
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Contact PersonOscar Mago
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Linkwww.omcabogados.com.pe


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