Tuesday, 10 June 2014

"The Happiest Days of Our Lives": Wall of evidence keeps PINKFLOYD! off Colombian TM register

According to Article 136(e) of Decision 486 of the Andean Community:
“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 ...”
This provision, which is not often invoked, came to the aid of vintage rock group Pink Floyd following an application for registration of the trade mark PINKFLOYD! for agricultural products (Nice Class 31). Pink Floyd (1987) -- the company established by band members David Gilmour and Nicholas Mason -- said it wanted to file an opposition even though it had no trade mark rights which could base an opposition in Colombia. Its only hope therefore was Article 136(e). Evidence of the group's history, sales, musical achievements, events, concerts, press articles, contracts and trad emark registrations in other jurisdictions was filed in order to prove that the band's name enjoyed worldwide recognition and that the members of the company had rights over it. This evidence was accepted by the Colombian Trademark Office, which concluded that the level of recognition of the band name transcended 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 common knowledge in the country.

On this basis, the opposition succeeded. 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 and any consumer could be confused as to the origin of the goods, due to the evident association with the band. Moerover, 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).

Source: "Pink Floyd successfully defends name without prior trademark registration" by Laura Michelsen and Andrés Medina (Triana Uribe & Michelsen, Bogotá), written for World Trademark Review, 10 June 2014

"The Happiest Days of Our Lives", here

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