The impact of the Mick Jagger case in Europe on “repeat trademark filings” in Argentina
By Mercedes Bullrich and Mariana Guzmán
The case goes back to 2018, when the Danish fast-food company Jagger Junk applied for the trademark in Europe. Musidor BV, the company that handles the Rolling Stones’ rights, opposed the application, successfully blocking it due to the similarity with the trademark “Mick Jagger”. In order to overcome this opposition and in view of the repeat filings of the opposing trademark in 1998, 2012 and 2016, the Danish company filed a cancellation action due to non-use against Mick Jagger’s trademark.
In June 2024, the European Union Intellectual Property Office (EUIPO) determined, on the basis of insufficient evidence provided by the rock giant, that Jagger acted in bad faith by registering his name as a trademark for restaurant, bar and café services without the intention of actual use, but rather as a strategy to renew his protection and protect his name from potential commercial exploitation without his consent. Therefore, Mick Jagger’s trademarks were declared cancelled.
In Argentina, a similar practice to Jagger’s is locally known as “repeat trademark filings”. The so-called “repeat trademark filings” arise from the practice of successively registering insignificant modifications of the same trademark during the term of the previous registration. The aim of this practice is to always maintain alive a trademark that has been registered for less than five years, thus protecting it from the non-use cancellation action set forth in sections 5 and 26 of Trademark Law 22,362. This phenomenon is often seen in industries where name protection is crucial, such as fashion and entertainment. However, Argentine trademark law, like European law, establishes that a trademark must be used for the goods and services for which it has been registered.
To sum up, the Mick Jagger case highlights the importance of good faith in the registration and use of trademarks. Both in Europe and Argentina, the effective and genuine use of a trademark is essential to ensure its legal protection and avoid adverse legal consequences.
References: Mick Jagger was acting in bad faith with his European trademark registration. (chiever.nl)
For further information please contact mbullrich@ojambf.com or mguzman@ojambf.com
