Bermeo successfully represented Musidor B.V., the Dutch agent of the Rolling Stones, in an opposition against Boca del Pozo for an infringing trademark
application on the Stones’ famous “Tongue and Lips” trademark.
Boca del Pozo is an association of fans that follows the well known Ecuadorean soccer team Emelec. In 2009, Boca del Pozo submitted an application for a logo featuring their name, as well as a graphic bearing a remarkable resemblance to the famous “Tongue and Lips” Rolling Stones logo originally featured in the group’s 1971 album Sticky Fingers.
Boca del Pozo submitted its application under International Class 41, Education and Entertainment. As the “Tongue and Lips” trademark was not registered in Ecuador, Bermeo had to base its opposition on the argument that the design is a well-known mark. Bermeo argued that the “Tongue and Lips” design has been famous worldwide for nearly 40 years, and was a registered trademark in several South American countries under multiple Classifications, including International Class 41.
Despite general reluctance to acknowledge “well-known marks”, the Director of the National IP Institute was persuaded by Bermeo’s arguments. In a decision dated March 15, 2010, the Director rejected Boca del Pozo’s application on the basis that the similarities between Boca del Pozo’s logo and the “Tongue and Lips” design would cause confusion among consumers given the mark’s long-standing association with the Rolling Stones. Following Bermeo’s successful opposition, the matter ended with Boca del Pozo deleting the logo from their website.
The research for this opposition was handled by student associates under the direction of Ana Lucía Merchan, the firm’s senior Intellectual Property litigator. Summary provided by our summer associate Timothy P. Fisher, (UPENN’13)
July 28, 2011