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Barreda Moller writes...

Protection of names in the trademark field

Despite the apparent incompatibility between trademark and name, Peruvian law has regulated the possibility that a name be registered as a trademark.

In this respect, amongst the relative prohibitions to registration, Andean Decision 486: Common Regime on Industrial Property, provides under Article 136 (e) the following:

136. Those signs may not be registered as marks whose use in trade would unduly harm a third-party right, especially where:

(e) they consist of a sign that affects the identity or prestige of profit-making or non-profit-making legal entities, or natural persons, including especially the name, surname, signature, title, hypocoristic, pseudonym, likeness, 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, except where the consent of that person or, if he is deceased, that of those declared his heirs is proved.

The Peruvian Administrative Court identifies two scenarios in the above provision:

1. The prohibition to register as trademark signs which consist of the name or surname (inter alia) of a person different from applicant, to the extent that said person’s identity or prestige is affected, except with the person’s consent or if deceased, of those who would have been declared the person’s heirs. This case operates when the name or surname which is intended to be registered as trademark does not identify a concrete person. The Court shall assess if the applied for sign affects the identity or prestige of the owner of the name or surname, which situation is unlikely, given the fact that the name in question does not identify a specific person.

2. The prohibition to register as trademark signs which consist of the name or surname (inter alia) of a person identified by the pertinent sector of the public as a person different from applicant, insofar as there is affectation of the person’s identity or prestige, except with the person’s consent or if deceased, of those who would have been declared the person’s heirs.

This circumstance operates when the name or surname proposed to registration as a trademark is identified by the generality of the public in a spontaneous, direct and immediate manner, with a specific individual.

The Court shall evaluate if the sign applied for registration affects the identity or prestige of such specific person and if so determined, shall demand the person’s consent. The consent of a person which, by chance, possesses the same name or surname will have no relevance.

This prohibition applies even in the hypothetical where the applicant would have the name or surname which is intended to be registered as trademark. In this scenario, authorization should be obtained from the person who is identified with the name or surname in a spontaneous, direct and immediate fashion.

Two aspects developed by case law and which are not specifically regulated under Article 136 (e), are the following:

1. Authorization from a foreign individual whose name is being applied for registration as a trademark will be required only if the name in question is identified by the generality of the national public in a spontaneous, direct and immediate manner with a specific individual different from applicant. The name must enjoy recognition and prestige in the country where protection is being claimed.

2. When what is being applied for registration is only a forename, an authorization will not be necessary. This, due to the fact that use of a forename is not susceptible of being associated with a particular person.

Two different interests are taken into consideration in the Court’s overall analysis. On the one hand, the interest of the individual who can be recognized due to a special relation to the goods/services distinguished by the trademark. On the other hand, the interest of consumers, in relation to the particular goods/services.

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