Is it possible to refuse registration by a new proprietor of a trademark name that is no longer in force if there are earlier copyrights?

January 2022

To deal with this case, we turn to Mexico.

The Mexican Industrial Property Law requires express authorization or consent from the holder of a prior right in order to register a trademark whose name consists of the name of an artistic work, unlessthe application is filed by the holder of such Intellectual Property rights.

However, the aforementioned legislation also expressly provides for the prohibition of the registration of a distinctive sign when figures relating to copyright are affected such as a periodical broadcast.

This was the case with the trademark “BEACH PATROL”, and not in reference to the beach patrolmen we all know, but to a company dedicated to the sale of sporting goods which applied for registration of the word trademark “BEACH PATROL” for its goods included in class 28 of the Nice Classification (specifically, gymnastic and sporting articles).

The main ground relied on by the applicant was that the trademark “BEACH PATROL” relating to the TV programme was no longer active since 2008 and, therefore, as it was no longer in force the trademark name was “free” for use.

However, the IMPI, which has been in charge of resolving this issue, states in its decision that the IPL at no time refers to the validity of the periodical broadcast as such, but rather it is a prohibition independent of this situation, since the purpose is to prevent a third party from taking advantage of the popularity of the periodical broadcast whose title reproduces the sign proposed for registration.

What this means is that, even if the trademark right is no longer in force, there are prior copyrights that are superimposed on the registration of a new trademark whose denominative is the same as the author’s artistic creation, which in this case is the famous television programme.

This even stated in the decision that a simple Google search for the conflicting word term “BEACH PATROL” returns all results mentioning the programme, so that this could lead to the consumer public immediately associating the sports brand with the series.

This would imply that copyright would be affected by granting the trademark registration applied for, since the applicant for the sign for sports articles would be obtaining a commercial advantage based on the image and popularity gained by the regular broadcasting of the TV programme, which has no connection with the sports trademark, thus taking advantage of another’s reputation which does not correspond to it.

It must be concluded from all this that in certain cases, even if the trademark in question has not been renewed which means that he owner no longer enjoys the corresponding trademark rights, a third party cannot apply to register a trademark with the same name, even if it has expired, when there is an earlier artistic work whose copyright is still in force.

Unless the new applicant for the trademark (in this case the sports company) has requested the express authorization of those who hold the earlier copyright and they have granted it. But this did not happen. For this reason, the IMPI has refused the registration of the trademark “BEACH PATROL” for sporting goods as it would be damaging the reputation of an artistic creation whose author still enjoys his rights.