On August 5, 2014 Division 1 of the National Court of Appeals on Federal Civil and Commercial Matters of the city of Buenos Aires issued a decision which involved the name, registered as a trademark, of a very well-known Argentine TV host and producer (“Tinelli Juan v. Tinelli Marcelo Hugo”).
Juan Tinelli had instituted court proceedings seeking to remove the opposition against the above application. The opposition had been filed by well-known TV producer and host Marcelo Tinelli on the basis of his registrations “MARCELO TINELLI” in International Classes 1, 2, 4, 5, 6, 7, 8, 10, 11, 12, 13, 14, 15, 16, 25, 26, 27, 29, 38 and 41.
The First Instance Court’s decision rejected the complaint. The court disregarded: a) applicant Juan Tinelli’s use of the mark in his trade on the strength of his registration in International Class 30, before the opponent became famous, without any instance of confusion having been reported; b) the fact that the defendant had abandoned the application for the trademark “MARCELO TINELLI” in Classes 29 and 30; and c) since the plaintiff already owned a registration for trademark “TINELLI” in Class 30, it was unwarranted not to allow it in Class 29.
The Court of Appeals reversed this decision and ruled for the plaintiff, holding that the latter’s arguments were consistent with the applicable law, in view of the facts of the case. At first sight both parties had the same right to register their own name, but the fact that the plaintiff sought to register only his last name (shared by both parties) had a special bearing on the case.
The Court analyzed Marcelo Tinelli’s arguments and concluded that they were reasonable because of the popularity of his name, and the multiple registrations of such name in various classes. . It also acknowledged Marcelo Tinelli’s popularity as a TV host and producer. But the Court nevertheless could not consider “MARCELO TINELLI” to be a well-known mark, as neither the fact that this was the opponent’s name or the impact of his appearances on TV were sufficient for his first and last name, or his last name only, to be considered well-known and overcome any application in a different class.
The Court held that the plaintiff should prevail over the defendant because: a) applicant is a food manufacturer whose last name was indeed “Tinelli”; b) the opponent had abandoned earlier applications of his mark in Classes 29 and 30 because of applicant’s opposition; and c) “MARCELO TINELLI” was not a well-known mark. “Only an exaggeration of the character’s impact can it be accepted that Mr. Marcelo Hugo Tinelli may have the monopoly over the registration of his last name –just his last name– as a trademark in all classes of the International Classification of Goods and Services”, held the Court.
Summarizing the Court’s position, as the marks involved belonged to different classes, it ruled out the likelihood of confusion as the parties’ activities were clearly different, with the opponent being a very well-known TV journalist and host, and the applicant being a retailer of food products.
The Court therefore concluded that the opposition filed against the application for the trademark “TINELLI” in International Class 29 was groundless.