/ Public Domain and Industrial Property: Perpetuation of Trademark Protection

It would be difficult to imagine that the registration as a trademark of a copyrighted work, during the term of protection, could be challenged by the entry of such work into the public domain.

Hernán Torres
Associate Attorney
Alessandri Abogados

The announcement of the entry into the public domain of a series of works such as Mickey Mouse (Steamboat Willie), Winnie Pooh, Tigger, among others, has raised the discussion about the possibilities for companies and right holders to reinforce or supplement the protection of their intangible assets.

Intellectual Property Law No. 17,336 establishes that copyright protection lasts for the life of the author and is extended for up to 70 years from the date of his death[1]. Once this term has elapsed, the works would become part of the common cultural heritage or public domain[2]. Does the copyright holder have options to supplement the protection of these intangible assets, whose protection is on the eve of its extinction due to the expiration of the term?

The Intellectual Property Law establishes that the rights granted to the holders of copyrights and related rights do not affect the protection granted to them by the Industrial Property Law and other legal provisions in force[3]. This allows to register as a trademark certain works or -at least- their characters, to the extent that they comply with the requirements of intrinsic and extrinsic distinctiveness required by the Industrial Property Law No. 19,039, and therefore to give its owner the exclusive and excluding right to use these works in the commercial traffic, to distinguish products and services that have been consigned in the relevant registration.

It is not necessary to make a thorough search to find countless trademark registrations that reproduce in their labels entirely characters associated with copyrighted works and that, therefore, are also protected by the protection granted by the trademark law. Some examples of these character trademarks are the Batman mixed-brand, the Mickey Mouse mixed-brand, or the figurative trademarks of Pinocchio, the Little Mermaid, or Tinkerbell[4].

Notwithstanding the foregoing, there are pronouncements of the national director of Inapi in which attempts to register trademarks relating to works that have entered the common cultural heritage have been rejected. An example of this is the application for the trademark The Little Prince, requested to distinguish, among other products, books and stationery in class 16. In this particular case, the authority considered that it is a fact of public knowledge that the requested sign corresponds to the title of the famous novel by the French writer Antoine de Saint Exupéry, which is currently in the common cultural heritage or public domain, considering therefore that the granting of a trademark registration in this case, would imply the constitution of a new monopoly on the novel, as opposed to the “public domain” and therefore would prevent free access to the work, whether to publish books, translate or adapt them and to use the title. Inapi considered that the trademark application was subject to the grounds of “unregistrability” of Article 20 paragraph k) of Law 19,039, considering it contrary to public order, morals and good customs, including those conducts contrary to competition and commercial ethics[5].

In this case, the abovementioned work was already in the public domain, so that this ground could be invoked by the trademark authority through the formulation of substantive observations. The case is different with respect to trademark rights that have already been granted previously and that have been maintained over time through renewals. Under the current law, the trademark authority would not have the power to challenge ex officio the renewal of a trademark registration on the grounds that the copyrighted work, which has been registered as a trademark, has subsequently become part of the common cultural heritage. Indeed, since there is no substantive analysis stage by Inapi for renewals of trademarks already registered, it will not be possible for the authority to make a substantive examination on the merits of the renewal.

Regarding the possibility of third parties seeking to challenge or directly annul registrations already in force, based on the fact that the copyrighted work that has been the subject of a trademark registration has subsequently become part of the common cultural heritage, the civil doctrine has held that for a cause of nullity to be established, the defect must exist at the time of filing the corresponding application for registration, thus excluding the possibility of declaring the nullity of a legal act -in this case, a trademark registration- due to supervening causes. In the words of Arturo Alessandri Besa, former partner of Alessandri Abogados, it is possible to affirm that: “in Chile there are no cases of nullities whose causes are produced after the execution of the contract or the execution of the act, but always the nullity comes from some defect that is incorporated to the act since its birth to legal life”[6]. Thus, it will not be possible to allege, on the basis of an event occurring after the granting of a trademark registration, that the registration suffers from a nullity defect.

Therefore, it is possible to rule out the possibility that a third party may annul a registration already granted, alleging that, after the granting of the trademark right, the copyrighted work that has been the subject of a trademark registration has become part of the common cultural heritage. On this point, it is worth recalling Arturo Alessandri Besa’s statement that: “[…] nullity is the sanction for the omission of the essential and validity requirements of an act; these requirements must all be present at the time of the conclusion of the contract or the execution of the act, and not after them, because either the act is born perfect, with all the requirements that the law demands, or it is born imperfect, due to the lack of one or more of them”[7]. Thus, if a copyrighted work is registered as a trademark during the term of protection, it would be difficult to imagine that its registration as a trademark could be challenged by the entry of such work into the public domain.

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[1] Article 10 Law No. 17,336.

[2] Letter a), Article 11 Law No. 17,336.

[3] Article 89 Law No. 17,336.

[4] These trademarks are registered with Inapi under the following numbers: 1084200, 1011655, 817136, 1104846, 937446, respectively.

[5] Resolution of partial acceptance of registration dated April 21, 2020, trademark application No. 1328277.

[6] Alessandri Besa, Arturo. La nulidad y la rescisión en el Derecho Civil chileno (T. XX of Book IV of the Civil Code), Ediar Editores Ltda. P. 101.

[7] Alessandri Besa, Arturo. La nulidad y la rescisión en el Derecho Civil chileno (T. XX of Book IV of the Civil Code), Ediar Editores Ltda. P. 101.