Press and Social Media

Trademark use of third party names and images.

• 2020, Dic
• By Gustavo A. A. Sena

"Miel Gibson".Yohana Agurto, a Chilean teacher began to commercialize honey. FOTO: CEDOC

As the end of the year is near, I find it useful to comment on a case related to intellectual property, which occurred during 2020.

By end of August, it was known that a Chilean teacher began to commercialize honey, distinguishing it as MIEL GIBSON, also along with the image of the famous actor and alluding to the film “Brave heart”, directed, produced and starred by him.

This is not an isolated case. The commercial strategy of using the name or images of famous people, or renowned fantasy character to identify stores or as brand names is more common than it is believed.

The casuistry is varied, with cases in our country as well as abroad. Thus, it is possible to find a barbershop named “Barber Streisand¨ in London, or as the cases that can be found in our country, where the names of Caterine Zeta Jones, Brad Pitt or Jim Morrison are taken and, by lexically playing with such names, the brands distinguish a catering service, a bakery or a gym.

In some cases, they also use the image of the personalities named.

I think it is useful to return to the subject since some media has taken the subject as something playful or fun, for the ingenuity and wit shown in the ability to tie the names and images of famous people or important brands with their ventures, while others have put the issue into the false scenario of confronting the strong against the weak, the great against the small; neither of them having analzyzed the issue on a crucial point in depth,.. can this be done?

Can someone use a person's name, pseudonym, image or portrait in a commercial activity without his or her authorization?

The answer is no.

Regardless of the economic conditions, nationality, strength or any other personal characteristics.

Let´s see the issue.

Trademark law is clear when it provides that the name, pseudonym or portrait of a person cannot be registered as a trademark without his consent or that of their heirs up to and including the fourth degree.

If they cannot register those signs, it is obvious that they cannot use them without authorization.

On the other hand, the Civil and Commercial Code, in a more general way and from a point of view other than the trademark law, essentially refers to the name as “a right and a duty” of the persons, and indicates the actions that the same has in their defense.

The code also refers to the "image" as a personal right, providing that in order to "capture or reproduce" the image or the "voice" of a person, their consent is required unless there are enabling circumstances, such as participation in public events, or there is a cultural or educational scientific interest or it is the regular exercise of the right to inform. In the event of death, the heirs must give their consent up to 20 years after such death. After that, if the reproduction of the image is not offensive, it will be free.

Even so, from the conjunction of these norms, it emerges that the Name and the image of a person are personal rights, and in order for a third party may to be allowed to use or register them as a trademark, they need the consent of such person or from their heirs up to the 4th degree inclusive.

The cases we mention are clear, third parties do not have the right to use or register the names, pseudonyms or images of famous personalities or from other third parties without their authorization. However, there may be some doubts in the case of common names such as John Smith (José Perez, Juan Lopez), etc., or homonyms.

In these cases, the principle that anyone can use their first and last name in a commercial activity, as long as it is not confused with the pre-existing ones in the field, governs. If they are common names, and there is a pre-existing one, the latter must use another name or add something to their own name so that it makes it unconfusible. The same occurs if they are homonyms. For example, I could not open a car dealership with my last name, SENA, by itself, because Sena Automotores already exists.

And what about an image? Which image cannot be used? Every image which is attributable to a person, that it is recognized, regardless of the time in question.

For example, if we take the case of Diego Armando Maradona, it will not be possible to register as a trademark his image with the sport team of "cebollita" doing ball-juggling, nor the one from his time at Barcelona or Napoli or Boca, when he had dyed his hair with the shape of a yellow stripe, or the image from the USA Word Cup with his short hair, nor the last known image of him, because they are all easily and renownely attributable to Maradona. It is his image at different times recognizable by anyone.

With regard to the pseudonym, when it is renowned it has the same protection as the name. The pseudonym can be made up of the first and last names such as Mirtha Legrand, Moria Casán, Nacha Guevara or just by a name as Sandro, or by fancy names as Landru, Nick.

These cannot be registered as trademarks without authorization either.

Neither can be registered the name or pseudonym nor deformations thereof, for example, Mirta Legran, Moira Kasán, or Nacha Guebara

Thus, in the cases that we mentioned above, if famous people take action, they do rightfuly do so and there is no need to look for economic or other differences since they are rights that all people have. Anyone can complain if a third party uses or registers their name, pseudonym or image without their authorization.

 

Gustavo A. A. Sena
gsena@sbm.com.ar

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SENA & BERTON MORENO was founded in 1937 by ALFREDO SENA and ERNESTO E. BERTON MORENO as a Patent and Trademarks Agency with a stable staff of only four people. Since then, the Firm has grown to reach its current size of forty people, working at our offices located only two blocks away from the Government House and at the heart of the commercial and financial district of the city. Ver más