Tuesday, 16 November 2010

Iron Maiden fails to cancel clothing mark in Chile

Nightmares, perhaps -- but no bad faith
In July of this year Chile's Intellectual Property Court upheld the dismissal of Iron Maiden Holdings Limited's cancellation action against Horacio Humberto Mardones Contreras' 1994 registration of the mark IRON MAIDEN for all goods in Class 25. The company -- the holding company for the British rock band Iron Maiden -- based its cancellation action on Chilean law and Article 6bis of the Paris Convention. While the claims under Chilean law were barred by a five year statute of limitation, the company maintained that no such limitation governed claims under Article 6bis, since the Convention states that “no time limit shall be fixed for requesting the cancellation…of marks registered in bad faith”.

The Intellectual Property Court didn't need to rule on that issue, since the company failed on the facts: it had not established the fame of its own mark or the bad faith of the defendant, both of which were requirements under Article 6bis. There was evidence enough that Iron Maiden was a well-known rock band, but this did not mean that its reputation extended to goods in Class 25. Accordingly it could not be presumed that the defendant registered the mark IRON MAIDEN in bad faith.

Source: note, "IP Court Raises Bar for Cancellation Under Paris Convention Article 6bis" by Francisco J. Silva Dorado, Silva & Cia., Santiago, published in the INTA Bulletin, 15 November 2010, Vol. 65, No. 20

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