So-called well-known trade marks enjoy a privileged level of protection, which is basically evidenced by two aspects. First, the legal system provides protection even in cases where a trade mark in such a condition – being well known – has not been registered. Second, the specialty principle whereby a trade mark is only legally protected in relation to those products or services for which its registration was requested and granted is not applicable to these types of trade marks.
Consequently, a well-known trade mark must be protected by its own nature, regardless of whether it distinguishes identical or different products.
In a recent decision Tinelli Juan v Tinelli Marcelo Hugo, August 5 2014, Division 1 of the National Court of Appeals on Federal Civil and Commercial Matters of the city of Buenos Aires reversed the First Instance Court's decision and distinguished between the fame a person's name may have from the fact that the name itself may constitute a well-known trade mark.
The controversy occurred between a food products businessman carrying the same surname (Tinelli) as that of an extremely famous TV host and entertainment producer – Marcelo Tinelli – in Argentina.
The renowned presenter had opposed the registration of a trade mark in class 29 (food products) requested by the mentioned businessman, by stating that his name constituted a well-known trade mark.
The Court held: "…the fame of the presenter and producer Marcelo Hugo Tinelli cannot be controverted. However, considering it is a 'well-known trade mark' that may account for an exception to the application of the principle of specialty, and that its effects may reach also the mere mentioning of his surname (not even registered as defense trade mark) is a completely different thing."
Based on these and other arguments, the Court reversed the first instance judgment and declared as groundless the opposition raised by the famous TV host against the trade mark application Tinelli in class 29.
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Daniel R Zuccherino |
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