Exclusive rights over a trademark in Colombia arise from registration. Also, when holding a trademark registration in Colombia, the obligation arises for its owner to use the trademark in commerce, beginning three (3) years from the date when registration was granted. 

This means that a trademark registration in Colombia may be canceled by the Trademark Office, if the trademark has not been effectively and publicly used, to identify in commerce, goods or services covered by the registration. 

A cancellation action is a formal request, posed by any third interested party, which commences by filing a cancellation petition with the Trademark Office, upon payment of the applicable official fee. 

If the cancellation petition is granted by the Trademark Office, the party who requested cancellation has a preferential right to file, within three (3) months following the decision that canceled the initial registration, a new application to register the same trademark that was canceled.  

Once a cancellation action has been admitted to proceeding, the owner of the trademark that has been questioned for lack of use will be granted a sixty (60) day term to provide evidence of sufficient, public and continuous use of the trademark in the market, in Colombia or at least one of the countries that are members to the Andean Community, to identify all or some of the products or services covered by the registration. 

The evidence provided in defense of the cancellation must show that the trademark has been used in the way that it was registered; this means that the trademark used in the market to identify products or services, corresponds to the one registered, and only variations in non-essential elements would be admitted to support a valid use. 

Following is a summary of elements that the  Colombian Trademark Office and the case law have identified as relevant to be considered when reviewing if a trademark registration is subject to cancellation:

– The cancellation of trademarks has the ultimate purpose of excluding, from the trademark register, any distinctive signs that have not been used by its owner, and which may be of interest to third parties.

– The concept of sufficient use of a trademark, implies both a qualitative and quantitative analysis of the evidence, to confirm if the evidentiary elements provided by the owner show that products or services have been made available in commerce under the trademark, in the quantities and in the form that is expected for the particular type of products or services. 

– To avoid cancellation the trademark must have been used by the owner or a third authorized party. Said use must have happened within the relevant period –three (3) years before the date when the cancellation request was filed– and must be referred to transactions for amounts that are consistent with the type of products or services that are covered by the registration.

– The evidence of use may show that the trademark has been used in Colombia, or in at least one of the member countries of the Andean Community, namely Perú, Ecuador, and Bolivia.

– Also, any evidence that shows use of the trademark in products that are destined to be exported from the member countries, may prevent cancellation, if the quantities are deemed to be sufficient.

– Evidence consisting of advertising materials is not deemed to be sufficient to prevent cancellation by itself, since it only shows an activity that may happen before the actual commercialization of products or services, but does not show that the products bearing the trademark have been available to consumers in the market.

– On a case-by-case basis, the Trademark Office will determine whether the use that is evidenced in the proceeding shows that the transactions reflected in the documents correspond to the normal commercialization of the relevant products. For example, if the trademark is registered to identify massive consumption products, the quantity of products sold must reflect the expected number of transactions over these types of products, during the relevant term.

– Any documents supplied as evidence of use, such as copies of invoices, accounting certificates or affidavits, must depict or make express reference to the trademark and the relevant products, so that the Trademark Office may verify that the information contained therein shows, with a high level of certainty, that the trademark has been used in commerce.

The Trademark Office may decide to partially cancel the registration. In this case, the decision to cancel will declare that the registration remains in force to cover those products whose use has been evidenced by the trademark owner, thus eliminating from the scope of the registration all of the other products that were not covered by the evidence submitted to the proceeding. 

A decision to cancel a trademark may be appealed, and the final decision from the Trademark Office may be challenged before the administrative courts. 

At Gamboa, Garcia & Cardona we are ready to assist with the defense of your trademark registrations against cancellation actions filed by third parties.  Also, we are ready to structure effective strategies to minimize the risk of cancellation, and to update your trademark portfolio so that the legal protection of your brands is in line with how they are currently used in the market, under your business plans and priorities. 

Decision 486 of 2000 of the Andean Community sets forth several events that may give rise to the rejection of trademark registration.  Said events intend to protect the general interest that is involved in ensuring that no exclusive rights are granted over signs that are not appropriable by the applicant (absolute grounds for rejection) or to protect the private interest involved in prior registrations or other priority rights (relative grounds for rejection).

In addition to the absolute grounds for rejection and the relative grounds for rejection, the Colombian legal framework provides that the Trademark Office may deny registration when available evidence reasonably indicates that the registration has been applied to perpetrate, facilitate, or consolidate an unfair competition behavior by the applicant.

This event must be raised by the affected party as an argument of opposition, which must be supported in evidence that may allow the Trademark Office to reasonably conclude that the applicant has the intention to obtain the registration as an instrument to gain an unfair advantage in the market.  A doctrinal discussion exists as to whether the Trademark Office may raise the unfair competition argument ex-officio if opposition from the affected party is not filed.

The Trademark Office is not competent to declare that unfair competition behavior has been committed.  Its authority is limited to analyzing the evidence available and determining, based on the evidence,  whether it is reasonable to conclude that the application for registration may be an element that contributes to the completion of an unfair competition behavior that may affect the market, the competitors, and the consumers.

The Trademark Office, in analyzing the unfair competition argument, must interpret the provisions of the Unfair Competition Law, and particularly determine if the evidence available reasonably indicates that the applicant is acting against the commercial good faith principle, intends to profit from the commercial reputation of a competitor, intends to create confusion among the consumers or to systematically imitate the commercial initiatives of the competition, except if its conduct is a natural response to the market dynamics.

Said analysis must be performed in the course of the last stage of the prosecution proceeding, namely the substantial review of the application, which follows the formal review, publication, and opposition stages. 

Even though the applicant has the opportunity to file defense arguments against the unfair competition claim, the analysis of the evidence made by the Trademark Office is reflected only in the first instance decision. Therefore, it may only be contested by the applicant in the appeal, or subsequently through nullity actions, before the highest administrative courts.

Case law has indicated that the Trademark Office has a duty to reject registration when the evidence shows, through indirect evidentiary elements, that the applicant intends to gain a competitive advantage.  To this effect said evidentiary elements must be sufficient to indirectly indicate to the examiner that the parties participate in the same market and that the applicant would benefit from registering a sign which would facilitate, without justification or economic effort, its entrance, consolidation, or increase in market share, and that said circumstances appear to affect the commercial efforts of the competitor.

Thus, the authority of the Trademark Office concerning the unfair competition argument may be interpreted to be preventive and to protect the healthy competition and the interest of consumers.

At Gamboa, Garcia & Cardona we are ready to answer your queries in connection with this interesting matter, and to assist you in the course of the trademark prosecution proceedings where the unfair competition argument may be raised to prevent the registration of a trademark.

Suppose you have expressed your work in a tangible form, but it contains material generated by artificial intelligence (AI). Although your copyright exists at the moment of creation, does the work contain enough human authorship on which to base a claim for copyright registration? Should you register the copyright on the work with the U.S. Copyright Office? If there is enough human authorship, the answer is YES!

In the United States, under 17 U.S.C. § 102(a), “Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device”. According to the interpretation of the U.S. Constitution and Supreme Court cases, the “authorship” in the work must be a human and not a non-human.

In the 2021 Compendium of Copyright Office Practices, the U.S. Copyright Office states that “to qualify as a work of ‘authorship’ a work must be created by a human being” and that it “will not register works produced by a machine or mere mechanical process that operates randomly or automatically without any creative input or intervention from a human author.” Suppose your work for copyright registration contains both human-authored material and AI-generated material. Would you be able to register your work as a human author? The answer is a case-by-case inquiry that depends on how the AI tool operates and how it was used to create the final work.

The U.S. Copyright Office has issued a statement of policy to clarify its practices for examining and registering works that contain material generated by artificial intelligence. The statement of policy was issued on March 12, 2023, and entitled “Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence”. In this statement of policy, the U.S. Copyright Office will consider whether the AI contributions are the result of “mechanical reproduction” or instead of an author’s “own original mental conception, to which [the author] gave visible form.” 

Examples of works that the U.S. Copyright Office will not register include when a human prompts AI technology to produce a written, visual, or musical work. In this case, the human identifies what it wishes to have depicted and the AI technology generates the work such as music in the style of The Rolling Stones. Examples of works that the U.S. Copyright Office will register include when a human selects or arranges AI-generated material in a sufficiently creative way that “the resulting work as a whole constitutes an original work of authorship.”  In this case, the AI technology generates the material, but the human selects and arranges the material or modifies the AI-generated material to such a degree that the modifications meet the standard for copyright protection. However, the copyright registration will only protect the human-authored aspects of the work, which are “independent of” and do “not affect” the copyright status of the AI-generated material itself.

Let us assume that your work contains human-generated material and AI-generated material. You need to determine whether you have enough human authorship in the work. Once you have determined that there is enough human authorship in the work that contains AI-generated material, you should register your work with the U.S. Copyright Office. However, you have a duty to disclose the inclusion of AI-generated material in the copyright application and provide a brief explanation of the human author’s contributions to the work. To register your work, you should use the Standard Application to identify the human author(s) and provide a brief statement in the “Author Created” field that describes the human authorship. For example, you should not identify the author or co-author as AI technology or the company that provided it. For human authorship, you should fill out the “Author Created” field to claim the portions of your authored work or claim that the “selection, coordination, and arrangement” of the content was created by you, but that the content was created by AI.

In addition, you may exclude the AI-generated material from the Standard Application in the “Limitation of the Claim” section in the “Other” field under the “Material Excluded” heading by providing a brief description of the AI-generated material or identifying the material “generated by artificial intelligence.”  You can also provide additional information in the “Note to CO” field in the Standard Application. If you are unsure of how to fill out the Standard Application, you can provide a general statement that the work contains AI-generated material. If there are no questions about human authorship, the U.S. Copyright Office will not contact you. Otherwise, the U.S. Copyright Office will contact you.

Suppose you have already submitted your copyright application for a work that contains AI-generated material. Can you correct your application? The answer is YES. If the copyright application is currently pending, you should contact the Copyright Office’s Public Information Office and report that your application omitted the fact that the work contained AI-generated material. If your copyright application has registered, you should correct the public record by submitting a supplementary registration. In the supplementary registration, you should identify the original human-authored material in the “Author Created” field, disclaim the AI-generated material in the ”Material Excluded/Other” field, and complete the “New Material Added/Other” field. If there are no questions about human authorship, the U.S. Copyright Office will issue a new supplementary registration certificate with a disclaimer addressing the AI-generated material.

Based on the above, you should register your copyright in the work that contains human-generated material and AI-generated material. If your work contains enough human authorship, you should have a valid copyright registration and prevail in a copyright infringement suit. If you fail to identify the AI-generated material in the copyright registration and sue an alleged infringer for copyright infringement, the alleged infringer may argue that you do not have a valid copyright registration. In addition, a court may disregard the copyright registration in an infringement action pursuant to section 411(b) of the Copyright Act if it concludes that you knowingly provided the U.S. Copyright Office with inaccurate information and the accurate information would have resulted in the refusal of the copyright registration. Therefore, it is recommended that you register your copyright in the work that contains human-generated material and AI-generated material and identify the AI-generated material with the U.S. Copyright Office.

Foreign entities wishing to register an Australian trademark should be aware that Australia is a ‘first-to-use’ jurisdiction. This means that the owner of a trademark is the first user of that trademark.

First to File

In some jurisdictions, the entity that is the first to file an application to register a particular trademark is the owner of that trademark. In a first to file jurisdictions the applicant will generally be the owner of the trademark regardless of whether the applicant has used the trademark prior to making an application for registration, and regardless of whether another entity (that has not previously applied to register the trademark) is already using it.

Arguably, a first-to-file system is easier to manage. Generally, in a first-to-file country, the only step the relevant IP Office needs to take to establish ownership of a trademark is to determine who was the first to file an application to register the relevant trademark.

First to Use

However, in Australia, priority is given to the entity that is the ‘first to use’ a particular trademark ‘as a trademark’ in relation to goods and services.

This means that if an entity has not registered its trademark in Australia, it could generally still rely on the Australian Consumer Law (which prohibits misleading and deceptive conduct and conduct that is likely to mislead or deceive consumers) or the Australian common law tort of ‘passing off’ to protect their trademark, provided that they were the first to use the trademark as a trademark in relation to goods and services in Australia. 

Further, if the owner of an unregistered trademark decides to apply to register that trademark and receives an objection from the relevant examiner on the basis of a prior registered mark, the owner of the unregistered trademark may (as a general rule) be able to overcome that objection if it can show that:

use of the applicant’s trademark commenced in Australia before the priority date of the cited trademark; and
their use as a trademark has been continuous at least up until the priority date of the cited trademark.

Use “as a Trademark”

Use as a trademark generally means that the trademark has been used as a ‘badge of origin’, for example, to show the source of the goods or services to which it relates. This was provided for in Coca-Cola Co v All-Fect Distributors Ltd [1999] FCA 1721, in which the Full Bench of the Federal Court of Australia held that the use of a mark as a ‘badge of origin’ (“in the sense that it indicates a connection in the course of trade between goods and the person who applies the mark to the goods”) is used ‘as a trademark’.

The Full Court remarked in their judgement – “that is the concept embodied in the definition of ‘trade mark’ in s 17 [of the Trade Marks Act 1995 (Cth)] – a sign used to distinguish goods dealt with in the course of trade by a person from goods so dealt with by someone else.”

One way to determine whether a mark is being used ‘as a trademark’ is to consider whether the mark is descriptive which would mean that it is unlikely that it has been used as a badge of origin and therefore, unlikely that it has been used ‘as a trademark’.

Notwithstanding that Australia is a ‘first to use’ jurisdiction, it is still extremely important that trademark owners seek to register their trademark. Having a registered trademark will make it quicker, easier, and cheaper to stop a third party from using an infringing mark in relation to the same goods and services. However, foreign entities should be aware that third parties may have rights to the same or a similar trademark in respect of the same goods or services.

The phrase “make your mark on history” is a commonplace one with several meanings and connotations. 

It is one offered at many high school and college commencement speeches as an exhortation to graduates to have an impact beyond themselves–as future-President, then-Senator John F. Kennedy said when telling Northeastern’s graduating class in 1956 “to make your mark,” this is part of what “every commencement speaker has said since classes were held in caves or trees.”

It is also often said into mirrors in quiet moments as a reflection of the personal ambition of one determined to go beyond the average or the commonplace in terms of achievement.

Of course, each use stems from the shorter phrase “make your mark,” embodying the mere notion of the archer hitting the target, or maybe even the less educated simply indicating agreement with an initial, an X, or a cross, or at times a craftsman adding “a maker’s mark—essentially personal branding.”

But we interpret that phrase in our own way today—we wish to see what occurs when one literally makes a mark based on, or out of, history by adopting as a tradename a historic event, person, or place.  We want to know what the rules are for doing that, and whether one must have their own connection to that person, place, or event to register the mark. We will look not only at the laws of the United States but at some other jurisdictions as well. 

First off, let’s see some of the ways this plays out in the United States. Section 1209.03(x) of the United States Trademark Manual of Examining Procedure (“TMEP”) addresses portions of this inquiry, noting as to historical figure names and fictional character names, that the “determination of whether a mark comprising the name of an historical figure or a fictional character serves as a source identifier or is merely descriptive turns on whether consumers link the mark to a particular commercial entity or whether others have a competitive need to use the name to describe their products.” As one commentator noted, citing examples like Tesla, The Lincoln Project, and others, the prohibition on allowing marks associated with living persons does not apply to historical trademarks:

Historical trademarks are trademarks about an event or person from history. A trademark using a name, portrait or signature associated with a living person may be rejected. Generally, the Trademark Office will not allow a mark associated with a living person without permission. However, historical trademarks involving non-living individuals do not require permission.

[Historical Trademarks are Good for Strong Branding (2020)]

But, interestingly, the United States Supreme Court recently granted review in Vidal v. Elster, Case 22-704, which calls into question the prohibition under 15 U.S.C. § 1052(c) on registering marks concerning a living person without permission; this case has the possibility of altering trademark law significantly and allowing current events to be treated similarly to historic events from a trademark perspective. It also intersects with several recent Supreme Court decisions, such as Matal v. Tam, 137 S. Ct. 1744 (2017), Iancu v. Brunetti, 139 S. Ct. 2294 (2019), and even Jack Daniel’s Properties, Inc. v. VIP Prod. LLC, 599 U.S. ____ (2023), and the First Amendment, as I and some colleagues recently described.

As I wrote at the time of the Circuit Court’s decision, this “will be an issue to watch moving forward.” Vidal presents the question of whether the refusal to register a mark under 15 U.S.C. §1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a living government official or public figure. Since history is made every day, this is an example of our issue concerning historic figures coming into present relief. Somewhat surprisingly, the briefing to date has been fairly limited, amounting to the cert. petition, one amicus filing, the opposition to certiorari, and a reply, each one a short document by Court standards. (None exceeding 27 pages, and recent IP cases such as Jack Daniel’s Properties, Inc., v. VIP Products LLC, Docket No. 22-148, saw over 30 amicus briefs filed, as I discussed in an earlier piece). But one can expect, now that cert. has been granted, that additional amicus filings will follow. So watch the docket to see how this case plays out, and to see how it impacts the concept of the registration of historic figure trademarks.

Additionally, issues can arise when one claims trademark rights connected to historic landmarks, as Justin Hughes discussed at length in the Wake Forest Law Review. His piece discussed various disputes, including the contest between the restauranteur who had operated his named establishment for forty years and his former landlord over use of the name “Fraunces Tavern” anywhere but at the actual site “where George Washington bade a teary farewell to the officers of the Continental Army.” Id. (at 1165-66). His examples well illustrate some of the issues surrounding trademark law’s application in such matters. Indeed, keeping famous names historically associated with famous sites rather than the specific businesses that had once operated at those sites has statutory support in the United States. See 54 U.S.C. § 302106 (“Notwithstanding section 1125(c) of title 15, buildings and structures on or eligible for inclusion on the National Register of Historic Places (either individually or as part of a historic district), or designated as an individual landmark or as a contributing building in a historic district by a unit of State or local government, may retain the name historically associated with the building or structure.”) As Hughes notes (at 1188 and following), this may be a specific concept applicable to historic landmarks, or nothing more than the application of the foundational concept that one cannot obtain trademark registration for terms that are merely geographically descriptive. Id. Or, it may be businesses at such locations may have “non-portable second meaning” for so long as the business remains at the site, as he describes (at 1196 and following).

Beyond Vidal as to living persons, and the recurring issues of historic landmarks, these concepts have contemporary impacts in the United States in connection with historic events as well. For instance, this article published on June 21st, just two days after many US jurisdictions celebrated Juneteenth:

The term Juneteenth has actually been around since 1890 when it replaced what was then known as “Jubilee Day.” But what does Juneteenth signify exactly? In 1863, Abraham Lincoln issued the Emancipation Proclamation abolishing slavery in the rebellious states. Unfortunately, it would take more than two years for enslaved people in Texas to be freed. It wasn’t until June 19, 1865, that African-Americans in Galveston, Texas would receive word from Union troops that they were officially freed. Black citizens in Texas subsequently established June 19, or “Juneteenth” as it has come to be known, as a day to commemorate the end of slavery. Not surprisingly, Texas was the first state to declare Juneteenth a state holiday, and it officially became a Federal holiday on June 17, 2021. As the holiday approached this year, it seemed the term “Juneteenth” was everywhere – in broadcast and local media, in advertisements and on social media. As an IP attorney, I was curious whether anyone owned any trademark rights relating to Juneteenth. More specifically, I was curious to know whether someone would try to capitalize on the name of such an historic and significant holiday. 

[Erica Halstead, Juneteenth’s Recognition as a Federal Holiday Opens Flood of Trademark Filings]

Last year at this time there were 36 active filings at the USPTO using Juneteenth as all or part of a mark, and six had actually matured to registration, according to Halstead. Now there are thirty-seven live filings, and the number of registrations has more than doubled to thirteen, though most specifically disclaim “’JUNETEENTH’ APART FROM THE MARK AS SHOWN.” 

One may have questions about the pros and cons of allowing someone to register a Juneteenth trademark, with some seeing it as a way to protect African American culture, and others saying that “the idea of Juneteenth potato chips, plates, and beverages does not sit right with [them] as the holiday is both celebratory and solemn.” And this is not the first time applicants have sought some level of control over such phrases, as there have even been trademark disputes concerning the term “Black History Month.” But questions or not, there are examples of Juneteenth trademarks that have been registered without incident or protest, such as one for an Indiana non-profit and another for strawberry soda. As one commentator noted as to that strawberry soda:

In 2015, Hecky’s Barbecue filed an application to register JUNETEENTH STRAWBERRY SODA. This mark subsequently registered in 2016 without issue. Why didn’t consumers have a similarly negative reaction to Hecky’s use of JUNETEENTH on consumer products? Some further digging quickly led me to find the answer. It turns out that strawberry soda is a traditional drink served at Juneteenth celebrations. In 1865, newly freed people consumed red food and drinks to symbolize the blood shed by previously enslaved people. As a result, drinking strawberry soda became an act of empowerment and rebellion. Consumers have accepted Hecky’s use of JUNETEENTH because it has a direct correlation to the holiday.

[Juneteenth’s Recognition as a Federal Holiday Opens Flood of Trademark Filings (2020)]

Though the recent recognition of Juneteenth as a holiday has led to a current focus on trademarks and applications related to that holiday, trademarks based on other holidays connected to historic events have been issued in the United States, as noted by Corsearch. In fact, the USPTO grants 17.1% of the applications it receives including the phrase “July 4th” or like, and 24.5% of those including the word “Thanksgiving.” Id. 

Other questions can emerge when one tries to own or urge a history that is not truly their own. For example, the United States has criminalized the notion of stolen valor, of fraudulently claiming having received a valor award, military honor, or other like recognition with the intention of obtaining money, property, or other tangible benefits by convincing another that he or she received the award. So, what one can claim from history is not without limits, but the exact location of such borders is not always clear in the United States when it comes to history, historic figures, events, and landmarks.

Now let’s move along to see how the rest of the world addresses these concepts. There are several examples worth examining. In Japan, for instance, one cannot register as a trademark one containing the name, famous pseudonym, professional name, or pen name of another living person. Japanese Trademark Law, Article 4(1)(viii). But Japan has allowed registrations of famous historical figures that are no longer living, including Cleopatra, Kennedy, Mozart, and others, according to Masaki Mikami. In Japan, the decision as to whether or not to allow such a registration is addressed under the country’s Trademark Examination Manual (TEM), section 42.107.04, under a multi-factor test:

1. In the process of examining an application filed for registering a trademark, examiners should pay special attention to the application for a trademark created after the name of a historical person since using or registering such application may cause damage to social and public interest, irrespective the unobjectionable composition of the trademark, or generally-accepted sense of morality, which may fall under Article 4(1)(vii) of the Trademark Act. Specifically, they should analyze such application if it would fall under the provision, comprehensively taking the following backgrounds into consideration:

1) Popularity of the well-known or famous historical person;

2) Acceptance of the name of the historical person among the nation or region;

3) Availability of the name of the historical person;

4) Relationship between the availability of the name of the historical person and the designated goods or services;

5) Circumstance, purpose, or reason of the application; and

6) Relationship between the historical person and the applicant.

2. In the process of the examination said above, especially when examiners recognize the application as “an application for registering the trademark filed by the applicant who takes advantage of the measures for public interest using the name of a historical person, who hinders the execution of the measures, and who intends to monopolize the interest while he/she knows that the application would result in damaging public interest,” the application falls under Article 4(1)(vii) of the Trademark Act based on the idea that the application may disrupt the order of fair competition and cause damage to social and public interest.

[Mikami, Name of a deceased historical person as trademark (2017)]

Mikami notes that the Japanese High Court invalidate the trademark “’Carnegie Special’…because it was presumed that the plaintiff had illegally intended to use the achievement of Dale Carnegie.” Id.

Other countries, such as India (by relying on The Emblems And Names (Prevention Of Improper Use) Act, 1950) make it a bit more straightforward by banning specific names from being trademarked. Thus, one may not use the name or any pictorial representation of Chhatrapati Shivaji Maharaj, Mahatma Gandhi, Pandit Jawahar Lal Nehru, Shrimati Indira Gandhi, Sri Sarada Math, Ashoka Chakra, and Dharma Chakra as part of an Indian trademark.  See Schedule to section 3 of The Emblems And Names Act, Clause 9, 16, 19.

There are likewise countries that, in accord with their own national experience, limit trademarks associated with Nazi Germany or the Holocaust, and they would include Germany, others in the European Union, and Israel. In Germany, the use of symbols and trademarks associated with Nazi Germany, including the swastika and other Nazi-related symbols, is strictly regulated. The German Trademark Act, Section 8(2)5, makes one of its “absolute grounds for refusal” any mark “which are contrary to public policy or to accepted principles of morality.” Under Article 7(1)(f), the Community Trade Mark Regulation has a parallel provision, as pointed out by Griffiths in Is There A Right To An Immoral Trademark? In fact, European Union Guidelines for Examination note specifically that “[u]se of the symbols and names of Nazi organizations is prohibited in Germany (§ 86a dt. StGB (German Criminal Code), BGBl. Nr. I 75/1998) and in Austria (§ 1 öst. Abzeichengesetz (Austrian Law on Insignias), BGBl. Nr. 84/1960 in conjunction with § 1 öst. Verbotsgesetz (Austrian Prohibition Law), BGBl. Nr. 25/1947). Any EUTM applied for which uses such symbols or names will be rejected as being against public policy.” Israel too, in Section 11(5) of the Israeli Trademark Ordinance, makes ineligible for registration “[m]arks which are or may be injurious to public policy or morality.” The same is true in the UK, and in the EU more generally as noted above. See UK’s Trade Marks Act 1994, s 3(3)(a), European Trade Mark Regulation, Article 7(1)(f); see also Griffiths, Is There A Right To An Immoral Trademark? Such statutes have led to denial of trademarks for JESUS in the UK.  Other countries such as Turkey and Poland have similar laws as well. See Turkish Industrial Property Code, Article 5(h); Polish Industrial Property Law, Article 131 (2). In fact, beyond generally protecting against registration of marks contrary to public order and good morals, Polish law also prohibits registration of marks that “contain elements which are symbols, in particular of a religious, patriotic or cultural nature, the use of which would offend religious, patriotic or national sentiments.” Polish Industrial Property Law, Article 131 (5).   

Despite such restrictions, many countries allow trademark registrants to own shares of history by registering trademarks connected to such countries’ own Independence Day celebrations, which clearly connect to historic events. For instance, “China celebrates its Independence Day on October 1 each year and its registry holds the largest volume of valid trademarks with a 37.1% share” of applications referencing that day being granted registration, which is more than double the 17.1% rate of granting for the 4th of July of marks in the US, according to Corsearch. Likewise, the French INPI grants 8.6% of the applications referencing its National Day (also known as Bastille Day) on July 14 of each year. Id. Thus, in these countries, like the United States, registering a mark connected with an historic event is certainly, on a statistical basis, possible though not probable.

Where does this leave us? Since trademarks are a form of property, the central question underlying this piece is, in some sense, the question of “who owns (or should be allowed to own) history?,” a question that some commentators have expressly debated. See “Who Owns History?” Interestingly, one of those debating that question said, “It strikes me this is a very American question: Who owns history?” At least in trademark, as seen above it is an American question, but it is also a question in many other countries as well. That leaves one more point to make, as we harken back to our title. There are fifty-plus US live trademark registrations or pending applications that use in whole or part the phrase “make your mark,” and one of them (US Reg. No. 6058414, owned and used by an intellectual property law firm) reads DON’T JUST MAKE YOUR MARK. OWN IT. Seems like a fitting closing observation to a piece about registering trademarks concerning historic figures, events, and landmarks.

The introduction of Law 4481/2017 into the Greek legislation aimed to regulate the collective management of IP and relative rights, thus amending the EU Collective Rights Management Directive. (1) Specifically, in its regulation of the public performance of musical works incorporated in legitimately released sound carriers, stores, and undertakings, article 24 of Law 4481/2017 introduced a reporting obligation for users.

What is the reporting obligation?

The reporting obligation entails the delivery of lists of works used by the user to the collective management organisations (CMOs) representing the rights of the specific works. This derives not only from the teleological interpretation of article 24 of Law 4481/2017 (article 17 of the EU Collective Rights Management Directive) but also from the specific grammatical wording of the provision of article 24 itself:

1. Users must provide the collective management organization within the first fortnight of every semester, unless otherwise agreed, lists of works that they have used or produced or sold or leased or lent or performed to the public or broadcast or presented to the public the previous semester or the mutually agreed period of time, mentioning the exact number of copies produced or available, as well as the frequency of presentations to the public, as well as, all the relevant information at their disposal concerning the use of rights that the collective management organization represents and which is necessary for the application of the tariffs, the collection of the rights revenue and the distribution and payment of the amounts due to the rightsholders. All the above information shall be submitted in accordance to a certain format provided to them by the collective management organization, which takes under consideration the current industry standards. There shall be a single format for each category of use for all collective management organizations, which are required to send a model format to HCO. The user’s obligation to submit a report based on such format shall be included in the license agreement concluded with the collective management organization.

2. In case a user breaches the above obligation, the collective management organization may impose a ten per cent (10%) surcharge on the remuneration due. If the user violates this obligation more than twice, the organization may impose a fifteen per cent (15%) surcharge on the amount due or terminate the agreement. (Emphasis added.)

When does the reporting obligation apply?

Any type of reporting on the user’s part towards a specific CMO may only concern the use of rights that the specific CMO represents. Article 24 does not introduce a general reporting obligation towards each CMO regardless of the works used and the users’ relationship therewith. On the contrary, it is legally indisputable that this reporting obligation comes into play only:

when the user is contractually connected to a specific CMO and has thus obtained a licence to use its works (repertoire); and
according to the correct and prevailing opinion in the Greek legal theory, when the user made use of the works of a specific CMO without its permission.

There is no reporting obligation if the user has no contractual relationship with the CMO applying for information and has only used works of a different CMO or of, for example, an independent management entity. The CMOs’ right to request information should be interpreted narrowly: a CMO is entitled to request information only if the use concerns works that it represents and not if the rights of the works used belong to another CMO and/or are being managed individually by the right holders or their licensee. Moreover, as is clearly stated in the law, the use of the works for which the reporting is requested on the CMO’s part must have produced income for the user, which in turn must be distributed to the beneficiaries. This is logically not possible if the works used are not controlled or managed by the CMO requesting information.

In order for a CMO’s application for information to be valid, certain legal procedural conditions must also be met. Most importantly, CMOs must provide the users with the specific format required for the provision of information, which is expressly stipulated in Article 24. The law, in full compliance with Article 17 of the EU Collective Rights Management Directive, even provides for the approval of this format by the Hellenic Copyright Organisation, thus setting the requirements for the activation of the CMOs’ right to information. In confirmation of the aforementioned need for a contractual link to exist between the CMO and the user and/or for the occurrence of (unlicensed) use by the latter of the CMO’s works, article 24 stipulates explicitly that “the licence must include the format”. Therefore, the format must be known to the user in advance and be handed over by the requesting CMO.

For further information on this topic please contact Kriton Metaxopoulos or Katerina Nikolatou at A & K Metaxopoulos & Partners Law Firm by telephone (+30 210 725 7614) or email (k.metaxopoulos@metaxopouloslaw.gr or knikolatou@metaxopouloslaw.gr). The A & K Metaxopoulos & Partners Law Firm website can be accessed at www.metaxopouloslaw.gr.

Endnotes

(1) Directive 2014/26 of the European Parliament and of the Council on collective management of copyright and related rights and multi-territorial licensing of rights in musical works for online use in the internal market.

This article was originally edited by, and first published on, www.lexology.com . Please click here to view the original publication.

Introduction

The Single-Member First-Instance Court of Athens recently dealt with three important legal issues:(1)

the principle of exhaustion of rights;
the amount and calculation of damages in copyright infringement cases; and
moral damages suffered by legal entities or persons as a result of the infringement of software and other “products” that enjoy copyright protection according to Greek law.

The Court’s decision arose in the context of injunction proceedings relating to the defendants’ unauthorised use of software programs. The plaintiff, a leading multinational software manufacturer, owned the rights to exploit the programs.

Decision

Exhaustion of rights over software programs
Article 41 of the Greek Copyright Law(2) reads as follows:

The first sale in the European Community of a copy of a program by the author or with his consent shall exhaust the distribution right within the Community of that copy, with the exception of the right to control further rental of the program or of a copy thereof.

Accordingly, the Court held that the holder of the IP right to a computer program cannot object to the resale of a copy thereof where such a copy is accompanied by a licence for unlimited use, whether material or immaterial. The Court held that this applies regardless of the existence of contractual clauses that prohibit further transfer. The Court made specific reference to certain European Court of Justice decisions in this respect. (3)

According to the Court, the term “sale” used in article 41 of the Copyright Law must be interpreted in a broad sense. The term includes, according to the decision, all forms of marketing of the copy of the computer program that include a right of time-limited use for a price. Such usage aims to provide to the rights holder the possibility of receiving remuneration corresponding to the economic value of the copy in question. (4) The second buyer of the specific copy, like any subsequent buyer, is a “person who legally acquired it” within the meaning of article 42(1) of the Copyright Law, which reads as follows:

In the absence of an agreement to the contrary, the reproduction, translation, adaptation, arrangement or any other alteration of a computer program shall not require authorization by the author or necessitate payment of a fee, where the said acts are necessary for the use of the program by the lawful acquirer in accordance with its intended purpose, including correction of errors.

Of course, the original purchaser of a computer program who resells either the hardware or the immaterial copy of their program – in relation to which the distribution right that the beneficiary had has been exhausted pursuant to article 41 of the Copyright Law – must ensure that it is impossible to use their own copy, at the time of its resale. This prevents the possible infringement of the exclusive right to reproduce a computer program provided for in article 42(2) of the Copyright Law, which belongs to the creator or author of the relevant program.

Damages in cases of copyright infringement
Article 65(2) of the Copyright Law provides as follows:

A person who by intent or negligence infringes copyright or a related right of another person shall be liable for compensation of damages and for restitution of moral damages. The compensation for damages cannot be less than twice the fee that is usually or by law paid for the type of exploitation that the infringer did without license.

Interpreting this provision, the Court held that article 65(2)(2) of the Copyright Law was introduced to address the difficulty of calculating the property damage in case of infringement of rights to intangible goods according to article 298 of the Civil Code. Article 65(2)(2) of the Copyright Law provides: “The compensation for damages cannot be less than twice the fee that is usually or by law paid for the type of exploitation that the infringer did without license.”

Article 65(2)(2) introduces the abstract calculation of damages based on the statutory or usually paid remuneration – that is, exclusively on the basis of objective criteria. (5) Thus, the usual fee is defined as that which a prudent licensor would demand and a prudent licensee would accept to pay if they had entered into a licence agreement knowing all the relevant circumstances. In other words, it is the usual price requested in the specific industry for granting the right to use the specific intangible good. (6)

Any previous contracts with third parties that granted a licence to exploit the intangible asset and that the beneficiary may have concluded in the past – before the act of infringement – are crucial for this calculation. Thus, the consideration that the beneficiary claims indiscriminately from the end user is the fee usually paid to license a computer program (ie, including reproduction, storage, installation, loading, display and execution) that is addressed to:

the general public (eg, an operating system); or
a specific professional public (eg, a design program or a sound and/or image-editing program).

In other words, it is the price of a program that has not been designed to cover the needs of a specific natural or legal person.

Moral damages suffered by legal entities
The Court considered the monetary restitution of moral damages suffered by a legal entity due to an infringement of its IP rights (including those to a software program). The Court rejected the plaintiff’s requests for the award of monetary restitution due to moral damage. It held that they were inadmissible because they were too vague.

According to the Court, the plaintiff had provided only a general and abstract invocation of its damage. It had failed to reference specific, materially significant incidents that, due to the infringement of its disputed IP rights, had:

disrupted its business operation and activity;
caused the loss of existing or new clients;
suspended its preparatory business actions; or
led to its financial loss or a reduction in its income. (7)

Comment

The Court’s restrictive approach with respect to assessing the moral damages of a legal person is in line with the case law in most decisions (on the merits) of the Greek appeals courts. Such decisions usually assimilate the moral damages of legal persons to actual financial loss. This differs from cases involving natural persons, where financial damages are totally distinct from moral damages. The latter aims to redress only the psychological harm suffered by a natural person as a result of the infringing behaviour and not their financial losses.

Case law is not unanimous on this matter. The Greek Supreme Court recently held that the moral damages of legal persons need not correspond to specific financial damages suffered. (8) It may be argued that the decision discussed in this article was wrong in this respect as it required the plaintiff to prove the incurrence of specific financial damages. This is against the basic principle of civil law, which is to compensate not only the direct financial damages of the injured person but also:

their direct distress (in the case of natural persons); or
the indirect adverse financial impact of the infringing act (in the case of legal persons).

In the latter case, there should be no need to prove specific financial damages as those are covered by the compensation due for damages and not by the amount of moral damages to be awarded by the court.

For further information on this topic please contact Kriton Metaxopoulos at A & K Metaxopoulos & Partners Law Firm by telephone (+30 210 725 7614) or email (k.metaxopoulos@metaxopouloslaw.gr). The A & K Metaxopoulos & Partners Law Firm website can be accessed at www.metaxopouloslaw.gr.

Endnotes

(1) Decision No. 2916/2022.

(2) L 2121/93.

(3) See:

C-166/15, Ranks and Vasiļevičs, EU:C:2016:762, paragraph 30 (12 October 2016); and
C-128/11, UsedSoft, EU:C:2012:407, paragraph 77 (3 July 2012).

(4) See Ranks and Vasiļevičs, paragraph 28 and UsedSoft, paragraph 49.

(5) See Supreme Court decision No. 438/2018.

(6) Id:

the above-mentioned provisions for the calculation of the compensation payable . . . impose objective comparison criteria (among which are the market conditions prevailing at the time of the damage) for the use of the program in question, in view of a specific business activity).

(7) See:

Supreme Court decision No. 382/2011;
Court of Appeals of Athens decision No. 2790/2021; and
Court of Appeals of Thessaloniki decision No. 626/2014.

(8) See Greek Supreme Court decisions:

No. 766/2021;
No. 1483/2021; and
No. 193/2018.

This article was originally edited by, and first published on, www.lexology.com . Please click here to view the original publication.

There has been immense activity surrounding the jurisprudence of celebrity rights in India with numerous judicial pronouncements in recent years. As regards legislation, there is no statute in India that expressly recognises the publicity or personality rights of individuals; therefore, the aspect of inheritance of publicity rights of a deceased person is still not entirely settled.

In a recent development, the High Court of Delhi confirmed that the publicity rights of individuals are not inheritable and extinguished with the death of the individual/celebrity. In March 2021, the Plaintiff (sole survivor in Category 1 of Class 2 legal heirs of the deceased) approached the Court seeking an injunction against the defendant from using Sushant Singh Rajput’s (SSR, a popular film actor in India who died a couple of years ago under mysterious circumstances) name, caricature, lifestyle or likeness in any of the projects or films (including ‘Nyay: The Justice’) which was being produced by the Defendants. Plaintiff contended that his consent was required before using SSR’s personality traits.

The Court watched the entire film and concluded that it is a re-enactment of SSR’s life based on publicly available news reports and observed that there was hardly any inventive input by the defendants in the creation of the film. The Court further observed that SSR’s personality rights weren’t violated since the publicly available news reports were not refuted or challenged at the time of their publication. The Court also observed that even if it is assumed that the film violated SSR’s publicity rights, ‘such rights were personal to SSR and died upon his demise’ and observed that other rights such as the right to privacy, personality rights, etc., vested in SSR (and were not heritable).

This judicial pronouncement has further cemented the legal position in India as regards the non-recognition of inheritance of publicity rights (and extinguishment of the same upon the demise of the individual/celebrity).

The phrase “make your mark on history” is a commonplace one with several meanings and connotations.

It is one offered at many high school and college commencement speeches as an exhortation to graduates to have an impact beyond themselves–as future-President, then-Senator John F. Kennedy said when telling Northeastern’s graduating class in 1956 “to make your mark,” this is part of what “every commencement speaker has said since classes were held in caves or trees.” Read more…

The introduction of Law 4481/2017 into the Greek legislation aimed to regulate the collective management of IP and relative rights, thus amending the EU Collective Rights Management Directive. (1) Specifically, in its regulation of the public performance of musical works incorporated in legitimately released sound carriers, stores, and undertakings, article 24 of Law 4481/2017 introduced a reporting obligation for users.

What is the reporting obligation?

The reporting obligation entails the delivery of lists of works used by the user to the collective management organisations (CMOs) representing the rights of the specific works. This derives not only from the teleological interpretation of article 24 of Law 4481/2017 (article 17 of the EU Collective Rights Management Directive) but also from the specific grammatical wording of the provision of article 24 itself: Read more…