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TINELLI VS. MARCELO TINELLI

A recent judicial decision revoked the judgment of original jurisdiction that had accepted the opposition filed by Marcelo Tinelli to the trademark registration “TINELLI” to distinguish foodstuff included in class 29 of the international classification.

The court of original jurisdiction had benefited the TV host as it was decided that his trademark “Marcello Tinelli” was notorious. And despite of his trademark was not registered in classes 29 and 30, such notoriety allowed to break the specialty principle that, in relation to trademarks, it is a jurisprudential doctrine whereby registration of a sign for certain goods or services cannot prevent from registering another identical or similar sign for different goods or services, in the same or other class.

This principle has its exceptions. Among them is the notorious trademark, a sign that has pushed the limit of the trademark classification and is recognized by most consumers, whether they acquire or not the good or service that distinguishes.

The judge ruled that the trademark “MARCELO TINELLI” had achieved this status by virtue of the excellence of its products, and considered Mr. Tinelli -Juan- acted in bad faith when registering his last name without the addition of his first name, which he interpreted as an attempt to use the prestige of others. Therefore the opposition filed by the TV host was accepted and registration of the trademark “Tinelli” in class 29 was prevented.

However, the court of appeal did not share this opinion and also took into account that Mr. Juan Tinelli had registered the trademark “TINELLI” (with design) in Class 30 in 1994 – also foodstuff – which added to the fact that he was a businessman, legitimized his registration claim.

It is clear that the fame of Marcelo Tinelli cannot move to any good or service. Nevertheless, having registered trademarks in the referenced classes, the situation assessment would have been different, having to prioritize the essential objects of a trademark law: the protection of consumers, i.e., that they cannot be deceived or confused and defense of sound business practices.

But in this case, the fact of having abandoned applications in classes 29 and 30 denotes certain disinterest in the goods protected that turns the stubborn defense in those classes blemished.

And while it is true that Show Match is a high rating and probably the most popular show in our country, it is not a minor fact that if it was conducted by someone else it would have not been the same, which evidences that notoriety is not given in this case by the product – TV show – or the trademark “MARCELO TINELLI” but his concrete presence.

Then, as stated in the final judgment, the trademark “MARCELO TINELLI” is not notorious. Notoriousness is unique to him. In fact, there are no products or services in the market under that sign. And if any, it could not being said they are notorious. It would not be the first time that a celebrity launches a product, using precisely this link he has with the public and that, however, the product is commercially insignificant and, furthermore, impairs his owner as it is not according to consumers’ expectation.

Regarding Mr. Juan Tinelli it could be considered that he did not act in bad faith when applying for the registration of the trademark TINELLI, without his first name, as this had occurred more than 20 years ago to distinguish food and at that time Marcelo Tinelli was not as popular as he is today. Neither can he be accused of the so-called mischief by registering only his last name, taking into account that jurisprudence considers that the last name is more prominent than the first name and the portion of the sign that more easily allows the consumer to identify the product and hold it in his memory. And in this case his action is more than justified considering that Juan is a very common name.

At least, to relieve the famous TV host, the unknown was not named Marcelo.

María Nájera