A group of “hardcore” fans called “Boca del Pozo,” supporting one of Ecuador’s main soccer teams, filed a trademark application for a design that “dressed” the famous Rolling Stones’ LIP AND TONGUE DESIGN with their team’s colors.

ECUADOR: IP Appeal Board Says Rolling Stones Copyright Trumps Trademark Application

Contributor: Rodrigo V. Bermeo-Andrade, Bermeo & Bermeo Law Firm, Quito
Famous & Well-Known Marks Committee—Latin America & the Caribbean Subcommittee

Verifier: Luis Marin-Tobar, Perez, Bustamante & Ponce Abogados, Quito

A group of “hardcore” fans called “Boca del Pozo,” supporting one of Ecuador’s main soccer teams, filed a trademark application for a design that “dressed” the famous Rolling Stones’ LIP AND TONGUE DESIGN with their team’s colors.

An opposition was first decided in 2010, where the Trademarks Director stated that the mark “would cause confusion among consumers given the mark’s long-standing association with the Rolling Stones.” However, in 2013, the Intellectual Property Appeal Board of the Ecuadorian Institute of Intellectual Property (in Spanish, IEPI) agreed to hear Boca del Pozo’s appeal claiming that the decision was illegal because the LIPS AND TONGUE design did not have a local or Andean Community trademark registration, that “ideas” are not protected by copyright and that their design was distinctive and would not cause confusion (José Luis Cavanna Chávez v. Musidor B.V. Res. No. 001-2015-CPI-2S).

The defense, Musidor B.V., argued that the matter should fall under the exception for famous marks. Local provisions for protection of famous and well-known marks require that, regardless of the registration, the mark be well known by the relevant sector of the Ecuadorian public. The IEPI has been reluctant to expressly recognize fame or well-known status of a trademark without a specific regulation creating a special proceeding for establishing recognition of well-known, notorious or famous trademarks. In this case, and although the Appeal Board mentioned that one basis for the opposition was fame, it failed to analyze whether the burden of proof was met or to determine if the mark was also protected against dilution.

The IEPI put more emphasis on the issue of copyright protection of works of art within trademark applications. Ecuador follows the French droit d’auteur doctrine, which makes works of art subject to protection from their creation, regardless of the nationality of the author, and without need for a registration or additional formalities.

The iconic TONGUE AND LIPS logo was designed by John Pasche in 1971 and used by the Rolling Stones in their Sticky Fingers album. The Appeal Board stated that the burden of proof on the ownership of the copyright was fulfilled because a legalized copy of the historical assignment agreement from John Pasche was submitted within the file.

Boca del Pozo raised the issue that, because ideas are not protected by copyright law, there was “no violation of any copyright by using an idea that does not belong to Musidor B.V. ”

In response, and in an effort to explain the origin of the idea to IEPI, the defense cited a quote in which Pasche recalled the story behind the logo: “I wanted something anti-authority, but I suppose the mouth idea came from when I met Jagger for the first time at the Stones’ offices. … Face to face with him, the first thing you were aware of was the size of his lips and his mouth.”

In its decision, the Appeal Board compared the two designs and stated that “the designs are identical in their strokes, borderlines, proportions … thus, the mark reproduces not the idea … but its form of expression.”

Finally, Boca del Pozo argued that the overall impression of the mark, considering the wording, the diagonal bar and the colors, made the mark distinctive enough so that it would not cause confusion among consumers. The defense rebutted this argument by presenting Internet matches and posts of members of the group using variations of the design (pictured).

The decision by the Appeal Board constitutes a significant precedent in that there are not many cases where these issues have been evaluated, or where the IEPI has expressly recognized that prior copyrights may be effectively asserted against trademark applications.

While the decision is helpful, trademark holders in Ecuador continue to look forward to the issuance of a regulation for the declaration of well-known status and fame of trademarks, so that full and straightforward protection can be granted to these valuable marks.

 

 

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.

© 2015 International Trademark Association

 

“This article first appeared here in the INTA Bulletin and was reprinted with permission from the International Trademark Association (INTA).”

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