Brands with names of celebrities

OMC abogados - The registration of a trademark confers on the owner the right of exclusive use of the trademark, and in the negative aspect of this right, it empowers the owner to prohibit third parties from using the trademark without their consent or authorisation.

According to article 134 of Decision 486, Common Regime on Industrial Property, it is established that ‘(...) any sign that is capable of distinguishing goods or services on the market shall constitute a trademark’. Thus, signs susceptible 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; sounds and smells; letters and numbers; a colour delimited by a shape, or a combination of colours; the shape of goods, their containers or wrappings; any combination of the signs or means indicated (...)’ (Commission of the Andean Community, 2000).

In this way, trademarks constitute incorporeal goods that are susceptible of being represented graphically. For their composition, as indicated in our legislation, it is valid to use graphics, figures, shapes, colours and smells that can be created arbitrarily, without any restriction, except for the prohibitions set forth in article 135 of Decision 486.

Having said this, it is clear that a person who wishes to identify his products or services in the market will look for different ways to create his trademark, from invented words, words that come from the acronyms of names, graphics from animals, plants, faces, etc. The variety is infinite and so is the creativity of people, in this sense they could make all kinds of combinations in order to obtain the brand they want for their products or services.

But what happens if a person in the midst of such creativity decides to register as a trade mark the name, pseudonym, image or whatever of a famous person?

Article 136 of our Community legislation provides for relative prohibitions on registration, which refer to those cases in which signs are refused registration because there are third parties with better rights. These prohibitions are based on the principle of likelihood of confusion, one of the fundamental principles of trade mark law.

As far as this article is concerned, we will only refer to paragraph e) of article 136 of Decision 486, which establishes a prohibition of registrability, which provides that those signs that "consist of a sign that affects the identity or prestige of legal entities, whether for profit or not, or natural persons, in particular, 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 or, if deceased, of those declared to be his heirs, is accredited; ‘(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, he will then have to prove that he is authorised to do so, otherwise the application will be denied.

For example, on 16 December 2015, the company SATTVICA S.A. filed in Peru the trademark MARADONA to distinguish goods and services in classes 25, 28, 35, 38, 38, 41 and 43. This trade mark was rejected at first instance, because although documents were submitted accrediting the authorisation of Diego Armando Maradona, the Peruvian Trade Mark Office rejected the documents on the grounds that they did not indicate the express consent of the footballer in favour of the aforementioned company to register his surname as a trade mark. 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 surname as a trademark in Peru. This appeal for reconsideration was declared well-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, whether natural or legal, decided to register a trademark with the name Cristiano Ronaldo, CR7 or the image of the footballer to distinguish energy drinks or protein drinks in class 32. That person would have to present the authorisation or consent of the footballer Cristiano Ronaldo for such registration, otherwise it would be rejected as it would be considered that the identity or prestige of the footballer is being affected.

It is worth noting that Cristiano Ronaldo has several brands of clothing, fragrances, among others, that bear his name and it is not necessarily the footballer himself who applies for them but third parties who have authorisation to do so.

And this is common, as many celebrities such as singers, sportsmen, models, venture into the commercial sphere by allying with companies to create and sell products such as clothing, footwear, perfumes, putting their name on them, registering them as trademarks as a way to get more profits, perhaps for personal marketing and in some cases they do it in order to avoid their use and exploitation by third parties, as a way to protect themselves against those who want to benefit from their fame or prestige.

One particular case that caught my attention and which I share in this article is that of the trademark ‘Miel Gibson’, as shown in the image, which was developed in Chile by a teacher, Yohana Agurto.

In this case, for example, the actor’s surname was used and combined with other words such as Honey to allude to the product being sold, but at the same time evoking the name of the actor Mel Gibson, in addition 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 the image of the actor and his name are being used without authorisation, as we have seen.

In our country, Peru, this is also common, there are cases where names of celebrities are used to distinguish products or services such as bodegas, 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 trademark? Yes, as long as they are authorised to do so.

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