Carolina Herrera's opposition to PALOMA HERRERA fails

In Carolina Herrera SA v Herrera (Case 455/97), the Federal Court of Appeals for Civil and Commercial Matters has dismissed Carolina Herrera SA's opposition to the registration of PALOMA HERRERA as a trademark in Classes 3 and 25 of the Nice Classification.

Paloma Herrera, an Argentine individual who has been the principal dancer of the American Ballet Theatre of New York since 1995, applied to register her name as a trademark in Classes 3, 25 and 41. Carolina Herrera SA, a fashion company, opposed the registration for all classes but subsequently restricted its opposition to Classes 3 and 25 on the following grounds:

• The trademark was confusingly similar to the well-known trademarks CAROLINA HERRERA, CH CAROLINA HERRERA, 202 OF CAROLINA HERRERA and HERRERA FOR MEN registered in Classes 3 and 25, among others.
  
  
• Paloma Herrera had no legitimate interest in registering her name as a trademark, given the fact that the products covered by Classes 3 and 25 are not related to dance lessons services, covered by Class 41.
  
  
• The proper name Paloma Herrera was not widely known by the public and was protectable under statutes other than trademark law.

The Federal Court of Appeals for Civil and Commercial Matters rejected the opposition on the following grounds:

• The fact that Carolina Herrera accepted the registration of PALOMA HERRERA in Class 41 meant that it had admitted, by extension, Paloma Herrera's legitimate interest in registering her name in any class.
  
  
• It is usual for celebrities to protect their name and reputation, and it is not relevant that Paloma Herrera did not carry out any commercial activity under her name.
  
  
• The mark CAROLINA HERRERA is well known as a whole, but neither CAROLINA nor HERRERA are well known separately.
  
  
• The fact that consumers are especially careful when purchasing high-value products, such as those marketed under the CAROLINA HERRERA trademarks, limits any risk of confusion created by the PALOMA HERRERA mark.

Fernando Noetinger, Noetinger & Armando, Buenos Aires