Pink Floyd successfully defends name without prior trademark registration
Article 136, Paragraph e) of Decision 486 of the Andean Community states as follows:
“Those signs the use of which in commerce may constitute an impediment to the rights of third parties, may likewise not be registered as trademarks, in particular where:
e) [they] consist of a sign that is capable of affecting the identity or prestige of legal entities, whether non-profit or not, or natural persons other than the applicant or identifiable by the general public as being such a different person, 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 ...”
Although the provision is not commonly used in the Andean Community, it has proved to be a good option to prevent the registration of signs in cases where the opponent has no apparent IP rights in this jurisdiction.
When the application for registration of the trademark PINKFLOYD! for goods in Class 31 of the Nice Classification (agricultural products) was published in the Colombian Industrial Property Gazette, Pink Floyd (1987), the company established by well-known musicians David Gilmour and Nicholas Mason, indicated its interest in filing an opposition, but stated that it had no trademark rights which could allow it to proceed in Colombia. As a result, the above-mentioned provision was chosen as the basis of the opposition.
Within the relevant time period, pertinent evidence of the history of the rock bank Pink Floyd, sales and musical achievements, events, concerts, press articles, contracts and trademark registrations in other jurisdictions was filed in order to prove that the name of the band enjoyed worldwide recognition and that the members of the company had rights over that name.
Based on such evidence, the Colombian Trademark Office concluded that the level of recognition of the band name surpassed the language barrier and that PINK FLOYD was well known by the Colombian consumer public, even though the meanings of the English terms ‘pink’ and ‘Floyd’ were not of common knowledge in the country.
The Trademark Office stated that Pink Floyd (1987) had demonstrated that it represented the band and was the legal owner of other IP rights in different parts of the world. Therefore, it was entitled to file the opposition.
The Trademark Office made it clear that the sign applied for and the name in conflict were confusingly similar, since the inclusion of an exclamation mark at the end of the sign was not sufficient to make it distinctive - especially as both signs were fanciful.
Based on the above, any consumer could be confused as to the origin of the goods, due to the evident association with the band. The examiner thus indicated that use of the mark PINKFLOYD! for the goods covered by the application in Class 31 would affect the identity and prestige of Pink Floyd (1987).
In its answer to the opposition, the applicant had argued that the opponent had to prove not only that the signs were similar, but also the relation between the agricultural products covered by the trademark applied for and the music industry. This was probably one of the most important arguments raised in defence to the opposition.
In this respect, the examiner stated that the issue was not the relation between the goods and services of commercial specific sectors, but the possibility of determining that the applicant was a different person from the opponent, whose given name, family name, signature, title, nickname, pseudonym, image, portrait or caricature had been publicly recognised.
A second argument raised by the applicant was that the Trademark Office should have been aware that the trademarks in conflict already co-existed in other jurisdictions. The examiner reminded the applicant that the Colombian Trademark Office is an autonomous entity and that its decisions are independent.
The first instance decision was appealed by the applicant, who raised the same arguments. The final administrative decision stated as follows:
- The name of a person or legal entity is an attribute of their personality and, due to its nature, it cannot be commercialised.
- A name, family name, signature, title, nickname, pseudonym, image, portrait or caricature may be subject to such protection, as long as it identifies an individual person or legal entity.
- According to the above, on appeal the applicant should have rejected the declaration of recognition of the name Pink Floyd in Colombia. However, he had not and, therefore, the only possible conclusion was that:
- the trademarks in conflict were confusingly similar;
- the difference between musical activities and agricultural products was not relevant; and
- the well-known name Pink Floyd must be protected irrespective of whether the opponent had prior trademark rights in Colombia.
The above-mentioned decision is final. Therefore, the applicant cannot seek additional remedies before the Trademark Office since all administrative procedures have now been exhausted. Nevertheless, the applicant may take this case to the country’s highest administrative court - the Council of State - to request a declaration that the above-mentioned decision is null.
However, the authors believe that the decision issued by the Trademark Office is well founded and meets the applicable substantive and procedural rules. Consequently, it is expected that the applicant will not file a nullity action.
Laura Michelsen and Andrés Medina, Triana Uribe & Michelsen, Bogotá
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