World Trademark Review.
El medio británico, reconocido internacionalmente por llevar a cabo uno de los rankings legales más completos del mundo (WTR 1000), publicó en su sección Legal updates, el triunfo de Televisión Nacional de Chile (TVN) por sobre el gigante del entretenimiento, FremantleMedia.
Cabe destacar que el canal nacional fue representado durante el proceso por Juan Pablo Silva, socio de Silva Abogados, quien logró obtener una contundente victoria en nombre de TVN y su recordada teleserie nocturna “Ídolos”.
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TVN defeats American Idol and Pop Idol in trademark dispute
- FremantleMedia filed nullity action against ÍDOLOS mark for being visually, phonetically and conceptually identical to its IDOL brand
- TVN appealed INAPI’s decision to accept annulment of the mark
- TDPI revoked INAPI’s decision and maintained the validity of ÍDOLOS mark
From time to time a trademark case arises where two unequal companies set out to assert their own interests and, in the process, set a precedent.
This was the case of the well-known late-night TV series Ídolos, produced by Televisión Nacional de Chile (TVN) during 2004–2005, which was the subject of a nullity claim against the registration of its trademark covering entertainment services in television media (Class 41) before the National Institute of Industrial Property (INAPI). The nullity action was filed by the large British entertainment company FremantleMedia.
As the owner of one of the most successful television entertainment formats in history – including famous TV programmes such as American Idol, Pop Idol and Latin American Idol – FremantleMedia based its claim on being the true creator, owner and user of the IDOL brand. It argued that the contested ÍDOLOS mark was visually, phonetically and conceptually identical to the sign created and widely used abroad by FremantleMedia.
The applicant also stated that the ÍDOLOS trademark was registered in bad faith, contrary to the accepted principles of fair competition and business ethics, stating in the legal file that “[t]he obvious bad faith is manifested in the fact that the actor has worked hard for more than 12 years to forge a powerful and solid brand within the entertainment market”.
TVN’s defence was managed by Juan Pablo Silva, who argued that the plaintiff had failed to prove use of the IDOL trademark abroad, which was the foundation of its claim. He stated that this “is nothing more than an attempt by the actor to monopolize an expression, even though it would not be registered or in use in Chile”.
Finally, he added that at the time of applying for and obtaining the trademark registration for ÍDOLOS, the defendant utilised the basic and accepted commercial practice of applying for a trademark that was not registered in Chile, undermining the arguments of the opposing party.
However, after hearing the arguments of both parties, INAPI decided to accept the nullity claim filed by FremantleMedia on September 9 2016 and ordered the annulment of the ÍDOLOS mark.
TVN appealed the decision to the Industrial Property Court (TDPI). The TDPI rejected the nullity claim filed by FremantleMedia, revoking the resolution by INAPI and maintaining the validity of TVN’s registration.
The TDPI, which entered its final decision October 3 2017, stated:
“Between the contested ‘Ídolos’ sign and the trademarks ‘American Idol’, ‘Pop Idol’, ‘Canadian Idol’ and ‘Latin American Idol’, relied on by the applicant, there are decisive differences, since each of the expressions in question has its own identity, which is why, although they share some elements, that circumstance is incapable of defining similarities at the level of confusing or misleading the public opinion.”
Silva excused himself from commenting on the case.
Credit: World Trademark Review.