Industrial Property Appeal Court decision on fame and notoriety of PLAYBOY

Chile

In November 2016 the Industrial Property Appeal Court published a verdict in its official bulletin which reverses a first-instance decision of the Chilean Industrial Property Department. This was an important decision concerning a famous trademark.

Playboy Enterprises International Inc applied for cancellation of the trademark.

PLAYBOY, registered in the name of Mónica Teresa Farías, for all goods in Class 33 of the International Classification, first obtained in 1995 and duly renewed.

Playboy Enterprises argued that its mark PLAYBOY had been in use since the 1960s and that the trademark was used, promoted and even registered abroad for products other than those in Class 33. It was the owner of various registrations in Chile for the trademark PLAYBOY in Class 16 and International Classes 3, 10, 38, 41, 42 and 43.

Playboy Enterprises also argued that registration of PLAYBOY in Class 33 was against Article 6 bis of the Paris Convention and also the corresponding Chilean prohibitions on registration.

In response, the defendant claimed that the action was extinguished by the Chilean Statute of Limitations as a consequence of Article 6 bis 3 of the Paris Convention which did not hold against non-famous trademark registrations obtained by third parties.

The defendant claimed that its lack of fame in Class 33 should result in a full rejection of the complaint.

The Industrial Property Department received evidence from Playboy Enterprises including:

  • three decisions by the Chilean Appeal Court recognising the fame of PLAYBOY rendered from 2005 to 2010;
  • articles crediting the use of the trademark by Playboy Enterprises in Class 33 as from 2008 and its general fame as from 1960; and
  • registrations for PLAYBOY, including products in Class 33 in countries outside of Chile.

The Chilean National Institute of Intellectual Property accepted the complaint stating that:

  • the action against a famous mark was not extinguished by the Chilean Statute of Limitations as a consequence of Article 6 bis of the Paris Convention; and
  • the fame of the PLAYBOY trademark had been credited by the complainant to distinguish, among other goods in Class 33, which was included in foreign registrations.

The decision was appealed by the defendant.

On May 10 2016 the Industrial Property Appeal Court upheld the appeal on the following grounds:

  • It was necessary to make a decision on whether the Statute of Limitations had extinguished the cancellation action against the PLAYBOY registration in Class 33.
  • In order that the cancellation action was not extinguished, the Statute of Limitations required that:
    • the trademark was notorious and used for identical or similar products to those covered by the famous trademark; and
    • the registration was obtained in bad faith.
  • Those requirements were not met as registration for the trademark PLAYBOY in Class 33 goes back to 1995, and the evidence of notoriety of the plaintiff’s corresponding mark went back only to 2008, after its registration by Farías.
  • The cancellation action was extinguished in connection with Class 33 by means of the Chilean Statute of Limitation, particularly as the goods in Classes 16 and 33 were not identical or related.

The complaint was therefore rejected and the defendant’s registration for the PLAYBOY mark was maintained.

Sergio Amenábar, Estudio Villaseca, Santigo

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