CLASS 46
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THURSDAY, 4 DECEMBER 2008
Che Guevara's portrait : an icon, not a trade mark
Taken 5 March 1960, the picture remained in Korda's personal archives until Italian publisher Giangiacomo Feltrinelli unearthed it seven years later and printed millions of posters which would make Che Guevara's determined expression a symbol of rebellion. Korda didn't react to its increasing use in various context, until Smirnoff vodka used the picture for advertising. The case is said to have been settled for $50 000. Other suits followed (mainly with regard to copyright ownership and copyright infringement).
In May 1995 Korda licensed the copyright on his famous picture to Patrick M. for a period of ten years. Article 7 of the agreement allowed the licensee to protect the picture by filing trade marks, in France and abroad. After Korda's passing, his daughter continued the license agreement for a further period of three years, ie until May 2008. In the meantime Patrick M. had filed a community trade mark application in classes 16, 25 & 41 on January 2002 (registered in November 2003) and granted a license to Legende LLC for an initial period of one year.
They found out that Cartal, an Italian company, and Sodisud, a French company, were selling various articles (dishes, clothing, briefs, key rings...) featuring the Che's "star beret" portrait. Those items were supplied by a Spanish company Rosa Negra Gifts (formerly Distriferia), the later having filed a design in Spain on said picture on 30 April 2004.
Copyright and trade mark infringement claims filed by Korda's heiress, Patrick M. and Legende LLC were successfully received in first instance (Paris first instance civil court, 26 February 2007). On 21 November 2008 however the Paris appeal court was more receptive to counter claims regarding the validity of the community trade mark.
Referring to article 7.1.b CTMR, the appeal judges held that the trade mark was unable to fulfill the function of a trade mark:
Infringement still remained, with regards to copyright.
Such motivation, as the judgment reckons, is obviously influenced by the jurisprudence on community trade marks validity. And more precisely, this is not unlike what we are used to read about slogans (for instance "REAL PEOPLE, REAL SOLUTIONS", CFI, 5 December 2002, T-130/01). An imperfect syllogism would lead to conclude that the "Guerillero heroico" portrait by Korda is nothing but the visual equivalent of a slogan.
Tags: Community trade mark cancellation, CTMR 7(1)b, France,
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Che Guevara's portrait : an icon, not a trade mark
community trade mark n°002550036,
in cl. 16, 25 & 41
(canceled by the Paris appeal court ).
Taken 5 March 1960, the picture remained in Korda's personal archives until Italian publisher Giangiacomo Feltrinelli unearthed it seven years later and printed millions of posters which would make Che Guevara's determined expression a symbol of rebellion. Korda didn't react to its increasing use in various context, until Smirnoff vodka used the picture for advertising. The case is said to have been settled for $50 000. Other suits followed (mainly with regard to copyright ownership and copyright infringement).
In May 1995 Korda licensed the copyright on his famous picture to Patrick M. for a period of ten years. Article 7 of the agreement allowed the licensee to protect the picture by filing trade marks, in France and abroad. After Korda's passing, his daughter continued the license agreement for a further period of three years, ie until May 2008. In the meantime Patrick M. had filed a community trade mark application in classes 16, 25 & 41 on January 2002 (registered in November 2003) and granted a license to Legende LLC for an initial period of one year.
They found out that Cartal, an Italian company, and Sodisud, a French company, were selling various articles (dishes, clothing, briefs, key rings...) featuring the Che's "star beret" portrait. Those items were supplied by a Spanish company Rosa Negra Gifts (formerly Distriferia), the later having filed a design in Spain on said picture on 30 April 2004.
Copyright and trade mark infringement claims filed by Korda's heiress, Patrick M. and Legende LLC were successfully received in first instance (Paris first instance civil court, 26 February 2007). On 21 November 2008 however the Paris appeal court was more receptive to counter claims regarding the validity of the community trade mark.
Referring to article 7.1.b CTMR, the appeal judges held that the trade mark was unable to fulfill the function of a trade mark:
"Considering that the parties have abundantly underlined the worldwide diffusion which this work from Korda has enjoyed ; that the echo it received has almost turned it into a sort of icon, an emblematic picture of an historical character, and trough his tragic fate, of a period of contemporary history;The trade mark was therefore canceled.
That the power of evocation carried by this picture to everyone's eyes is not contested;
Considering that it follows that the consumer of the products and services for which the mark is registered, notably clothing, editorial products, cultural activities, will perceive the litigious community trade mark not as a sign which designates the origin of the products and services of his interest but as a political or artistic reference to the work of Korda which magnifies Che Guevara;
That in other terms, the perception of this picture by the consumer excludes use [of said picture] to designate the origin of the products and services for which it was registered" (unofficial translation)
Infringement still remained, with regards to copyright.
Such motivation, as the judgment reckons, is obviously influenced by the jurisprudence on community trade marks validity. And more precisely, this is not unlike what we are used to read about slogans (for instance "REAL PEOPLE, REAL SOLUTIONS", CFI, 5 December 2002, T-130/01). An imperfect syllogism would lead to conclude that the "Guerillero heroico" portrait by Korda is nothing but the visual equivalent of a slogan.
Reference:Posted by: Frédéric Glaize @ 00.03
Paris Appeal Court, 4è. ch. B, 21 November 2008, Sodisud / Sarl Legende LLC, Patrick M., Diana Evangelina D.L., Rosa Negra Gift SA, Cartal SRL, RG n°07/06427.
(hat tip to Me Cyril Chabert)
Tags: Community trade mark cancellation, CTMR 7(1)b, France,
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