Well-known trademarks vs. proper name: The Battle of the Herreras
It all began as a loving gesture from a son to his mother in Peru: for Christmas, Darío Morales decided to gift his mother, María Carolina Herrera, a trademark application to register “LA JABONERA BY MARÍA HERRERA” in Class 3 at Peru’s National Institute for the Defense of Competition and Protection of Intellectual Property (INDECOPI). The idea was to formalize his mother’s soap business through trademark registration.
However, the process was anything but simple. The application faced an opposition from Carolina Herrera Ltd., which argued potential confusion with its “CH CAROLINA HERRERA” trademark, registered also in Class 3, covering products like non-medicinal soaps, bleaching preparations, and perfumes. The applicant decided to answer the opposition, asserting her right to use her own name (as evidenced by her ID card) to represent her business. She also argued that “Herrera” is a common surname in Peru, meaning no one could claim exclusive rights to its use as a trademark. Furthermore, she emphasized the differences between the products offered by each party and highlighted her trademark includes a design, and these graphic elements reduced any likelihood of confusion.
Vs.
INDECOPI ruled in favor of Carolina Herrera Ltd. on July 14, 2022, based on the risk of confusion for consumers and the status of well-known trademark of CAROLINA HERRERA´s marks. However, María Herrera challenged the decision and ultimately prevailed. On August 23, 2023, INDECOPI registered the trademark “LA JABONERA DE MARÍA HERRERA.” The final ruling considered the trademarks as a whole, rather than dissecting individual components, and concluded that the differences between “CH CAROLINA HERRERA” and “LA JABONERA BY MARÍA HERRERA” outweighed the similarities, allowing both to coexist.
This was not the first time the famous designer wanted to enforce her well-known trademark against third-party applications involving her surname. In Argentina, a similar situation arose in 2003 when ballerina Paloma Herrera applied to register her name, “PALOMA HERRERA,” as a trademark in Classes 3 and 25. Carolina Herrera S.A. opposed the applications, arguing that the trademarks were confusingly similar in their graphic, phonetic, and conceptual elements. The company also claimed that “CAROLINA HERRERA,” as a well-known trademark for perfumes, should not have its reputation illegitimately exploited. However, in a well-reasoned ruling, Argentina’s Federal Civil and Commercial Court of Appeals sided with the ballerina, allowing her to register her name.
It is clear that, on one hand, individuals have the right to use their names for commercial purposes and seek trademark registration. On the other, owners of well-known trademarks aim to protect their marks from dilution. The question arises: when a proper name is identical to a registered mark or even well-known trademark, should this coincidence be enough to deny the non-well-known homonym their right?
Trademark law in Argentina allows for the registration of proper names but does not grant an absolute right. Trademark applications are subject to regulations designed to prevent confusion and harm to third parties.
Ultimately, the resolution often hinges on the applicant’s good faith and legitimate interest. These elements are generally presumed when the application involves the person’s proper name and when the circumstances objectively support their intentions. As long as good faith is evident, it should prevail, as bad faith cannot be presumed.
For further information please contact cmartinez@ojambf.com
