Polmos Siedlce secured registrations for its well-known marks CHOPIN VODKA after an initial rejection for alleged violation of Frédéric Chopin's name and likeness.
The IP Appeal Board reversed the decision, granted the registrations and sets a new precedent in Ecuador.
Polish company Polmos Siedlce, producer of Chopin vodka, protected internationally by trademarks Chopin and Chopin + Design, applied for registration of its marks in Ecuador.
During examination, the trademarks director rejected the registration for both marks in August 2009, citing article 136(e) of the Andean Decision which bars from registration trademarks that: “consist of a sign that is capable of affecting the identity or prestige of (...) persons other than the applicant (...), particularly in regard to a given name, family name, signature, title, nickname, pseudonym, image, portrait, or caricature, where no consent has been obtained from that person or, if deceased, the declared heirs of that person”.
The director of trademarks concluded that it is necessary to file a letter of consent from Frédéric Chopin’s heirs, as not doing so would affect the identity and prestige of “one of the most important composers and pianists of history”.
Polmos Siedlce appealed to the IP Committee. Bermeo & Bermeo represented Polmos Siedlce and stated, among other arguments, that if the law is carefully read, only marks that affect the identity or prestige of a living person are barred from registration, that Chopin died more than 160 years ago and there are no heirs. Furthermore, it was argued that Chopin has registrations all over the world, even in Poland where Chopin was born and where his identity and prestige should be most protected. At the national level, we argued that there are more than 120 registrations of marks containing names of famous persons, and that not even the names of local personalities and heroes such as Bolivar or Sucre were rejected for registration, because the correct standards were applied. The trademarks director had repeatedly considered that the identities of these personalities were not affected.
"... THE WORD REFERRING TO FRÉDÉRIC CHOPIN IS IN THE
PUBLIC DOMAIN AS HE DIED MORE THAN 160 YEARS AGO"
The committee accepted the appeal and granted registration to both trademarks, Chopin and Chopin + Design, which separately comprise the name and likeness of Frédéric Chopin. The committee stated that regardless of the bar against registration in the above-mentioned article, the trademark is both capable of being distinctive for the goods it intends to protect, and not within any bar of registration, because it does not affect third party rights because the word referring to Frédéric Chopin is in the public domain, as he died more than 160 years ago.
This decision sets a new precedent in Ecuador and for the bar against registrations of names and likenesses. Although we believe that the committee reached the correct conclusion, it refrained from analysing whether Chopin’s name or likeness was affected by a registration to protect alcoholic beverages, whether the same standard was applied when registering the other 120 names, or any of our other arguments. In any case, for the first time it was declared that a name and likeness can be in the public domain if the person has died a certain amount of time beforehand.
"THIS DECISION SETS A NEW PRECEDENT IN ECUADOR
FOR THE BAR AGAINST REGISTRATIONS OF
NAMES AND LIKENESSES"
Though the decision sets a strong precedent for similar cases, it leaves a few open questions, such as when a dead person’s name migrates into the public domain, or what would happen if the person has heirs. As the decision did not cover all the different aspects, trademark applications containing names, likenesses, images, pseudonyms, signatures, portraits or caricatures of third parties might still be rejected, depending on the details of each case.
This article was first published in World Intellectual Property
Review e-Digest 2012: ALCOHOL WARS IN ECUADOR
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