Law & Practice

ARGENTINA: Goalkeeper ‘Chila’ Can’t Block CHILA Mark

Published: September 8, 2021

Martin Chajchir

Martin Chajchir Marval, O'Farrell & Mairal Buenos Aires, Argentina Anticounterfeiting Committee—Latin America and Caribbean Subcommittee

Verifier

Claudia Serritelli

Claudia Serritelli Estudio Chaloupka Buenos Aires, Argentina Anticounterfeiting Committee—Latin America and Caribbean Subcommittee

Any Latin American football (soccer) fan will recognize former Paraguayan goalkeeper José Luis Chilavert, known as “Chila” to the press and fans alike. Throughout his career, he played on several teams in Argentina and abroad, won many club titles, and is regarded as one of the greatest goalkeepers of his generation.

In February 2014, an individual applied in Argentina for the trademark WEAR IT PROUD! CHILA BAG CO. BUENOS AIRES EST. 2014 (shown below) to identify bags and backpacks (“mochilas” in Spanish) in Class 18 (bags and backpacks). As “Chila” features predominantly in the trademark, Mr. Chilavert opposed the application based on Section 3(h)) of the Argentine Trademark Law, which states that the name, pseudonym, or portrait of a person may not be registered without that person’s consent.

Chila Bag Co mark

The court of first instance (in re Paenza v. Chilavert, Docket 1295/16) dismissed the opposition on August 30, 2019, and held that the pseudonym “Chila” was not well-known, that the term “chila” evoked a “mochila,” and that the defendant did not commercialize goods in Class 18.

Mr. Chilavert appealed the decision the following month, arguing that his pseudonym was famous and well-known, and that the principle of specialty should not apply when protecting names and pseudonyms.

The Federal Court of Appeals upheld the lower court’s decision and ruled that pseudonyms and nicknames deserve protection only when they are famous, a status that not all will reach. Widespread knowledge and reputation of a name is not enough to secure protection against registration of similar marks in unrelated classes.

The Appeals Court acknowledged that Mr. Chilavert proved that he is known as “Chila,” but in their consideration his pseudonym was neither famous nor well-known. The court, in its decision issued on April 21, 2021, also pointed out that the contested trademark application included other elements that added distinctiveness and, also, that Mr. Chilavert had not registered his pseudonym as a trademark, nor had he been engaged in the manufacture or sale of goods in Class 18.

Author’s Insight

This ruling follows a line of previous precedents, but it is relevant in view of the subjectiveness in determining whether a pseudonym is famous. The takeaway of the decision is that non-registered pseudonyms deserve protection in trademark conflicts only if they are considered famous, and it is advisable to register a pseudonym as a trademark in the relevant classes to ensure protection.

Although every effort has been made to verify the accuracy of this article, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

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