Tuesday, 22 November 2011

Mexico: IP office decided a 'kinky' case

Susana Zabaleta, a Mexican singer and actress, and whose talent has being recognised this year by ‘The Cervantes Festival’ for her 25-year career, has been fined by the Mexican Institute of Industrial Property (IMPI) with payment of 600 thousand Mexican pesos (approx US$44,000) for the use of the name ‘Kinky’ in her shows – called ‘kinky retorcido’ (Twisted Kinky)

The action was brought by a Monterrey band called ‘Kinky’. In 2004 the band registered the word 'kinky' as a trade mark. Because of this, the band began a legal process at the IMPI against the singer, arguing that the public is confused about their presentations with the shows she appeared with their name. On Monday 14th the IMPI brought a statement in favour of the band, serving her with a fine.

Zabaleta informed that she will not change the title of her show. She strongly defended her right to freedom of expression and also asserted that the use of the word ‘kinky’ in her show is an adjective, used for the title of her work –not a trade mark use or identifying the name of an artist.

Amicable practice
In IP as well as in any other area of law we can resolve matters in an amicable manner. However, Zabaleta reported that she was made aware of the action when she was sued! She did not understand how she could be sued for a ‘word’. She tried to contact the band to settle this matter but her calls were never answered. She explained that she called her show with a forgotten adjective dating back from the XVIII century: meaning twisted and referring to people who have sex in different ways. She mentioned that she was not even aware that there was a band called kinky.

Making the matter less amicable
It is also mentioned that the band and owners of the trade mark ‘kinky’ are analyzing to fill in a civil action for damages caused by misuse of their name.

There is several issues that need to be look at: how strong this word is as a trade mark –yes I know, some of you believe that there is not such a thing as a weak or strong trade mark; and also note that the word is not used in a trade mark sense; and finally the issue of confusion – for instance, if someone invites you to the show called ‘twisted black eyed peas’, would you be confuse as to believe that you are going to see the actual band ‘black eyed peas’? I think that it pretty much depends on how the show was advertised: for example, and I just guessing in here, I presume that the billboards and newspapers or flies did not say just ‘twisted kinky’, it should have also said ‘by… Susana Zabaleta’.

Any kinky thoughts on this case?
Different newspaper and blogs reported the case: check here, here and here.

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