Calvin Klein wins last battle in Chile


Chile's Supreme Court has dismissed an action brought by Michelangelo SACI for re-registration of the CALVIN KLEIN trademark. Michelangelo is a clothing manufacturer which had registered and used the mark for over 20 years.

In 1981 the Calvin Klein Company filed an action to have Michelangelo's registration cancelled, but it lost. In 1996 the fashion designer himself filed a cancellation action, which he won in 1999. Michelangelo appealed that decision, arguing that Klein's action was precluded by res judicata (ie, the issue had already been decided, a conclusive judgment had been issued and the case could not be tried again).

The Supreme Court disagreed with Michelangelo, finding that Klein was not precluded from bringing an action (although his company was), as he had not been involved in the first proceeding. The court then determined that Klein enjoys worldwide reputation as a designer and that the trademark that bears his name is well known. Thus, the court ruled that it is only fair that the trademark which bears Klein's name should be transferred to him and the company authorized to use his name.

This case shows that, although slow in administering justice, the Chilean courts can be persuaded to follow international norms on the protection of well-known marks.

Fernando Castro and Alfredo Montaner, Sargent & Krahn, Santiago

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