The “ARECHABALA” case: Let's Talk about Names

Corporación Cuba Ron S.A. applied for the registration of the trademark “ARECHABALA” in class 33 and encountered an opposition from Mrs. María Catalina Arechabala Arechabala based, among other grounds, on the applicant’s lack of legitimate interest and section 3 paragraph h) of Law 22.362, which prohibits the registration of the “name, pseudonym or portrait of a person as a trademark without their consent or their heirs’ up to the fourth degree.” As the conflict began before the new trademark law came into force, the opposition was decided by the courts.

The conflict between the parties dates back more than six decades and took place against the backdrop of the Cuban revolution.

After the triumph of the revolution that brought Fidel Castro to power in 1959, the José Arechabala S.A. company, a rum producer founded at the beginning of the 20th century by Mr. José Arechabala, was expropriated by the Cuban government. Since then, it has been part of the Cuban Ron Corporation, which groups all the rum factories for the production and commercialization of rum as well as other spirits worldwide.

When setting the grounds of the opposition at court, the defendant argued that “ARECHABALA” is her family's last name and represents the enormous effort and prestige of her great-grandfather, Don José, in the rum and white drink’s industry.

She also argued that the original owners of the company did not grant their consent to the confiscation of their assets and the appropriation of the trademark in 1959 and argued that this circumstance evidences the lack of legitimate interest of the applicant. She emphasized that “[...] it is not appropriate to naturalize the totalizing measures carried out in another country and give them legal standing and validation in our Republic [...].”

Furthermore, she invoked the Paris Convention that establishes that the trademark is governed by the law of the territory where it is located and requested the application of section 3 paragraph h) of Law 22.362 cited above because “[…] otherwise a situation that is harmful to rights, such as the revolution, would be concealed, and what is worse, would be transferred to our country[...].”

When deciding, the Court of Appeals made an interesting analysis of section 3 paragraph h) of the Argentine Trademark Law as well as of the conditions for its application and its implications.

Even though this article has been criticized for its lack of precision, the Court recalled that, through their interpretations, legal scholarship and case-law have drawn the contours of how and when the prohibition can be applied. In this sense, the Court pointed out that in principle, the reason why the protection is granted to the group formed by the name and last name is twofold: to constitute the identity of the person and to allow an association with a certain branch of productive activity. In addition, the Court pointed out that using a last name in isolation as a trademark can be prohibited if it represents the family tradition in the continuity of a company; and the use of that last name that lacks notoriety cannot be objected unless its owner can prove the affectation of a specific interest.

 

In the Court’s opinion, the extremes pointed out in the case were not proven because:

 

• the trademark that the Corporation intended to register was not the full name of the defendant;

 

• the defendant was not the founder of the company or the person in charge of continuing the family business and she did not prove to have any commercial activity in Argentina or abroad.

 

On the other hand, the Court rejected the need to require the consent of Mr. Arechabala’s heirs to register the trademark “ARECHABALA” in Argentina in view of the following:

 

• the expropriation of José Arechabala S.A. caused the extinction of ownership over the intangible assets for the original owners and the consequent break in the chain of rights of their heirs;

 

• the Trademark Law, the Paris Convention, and the TRIPS agreement do not allow judges to review trademark transfer or expropriation processes occurred in other countries.

 

In view of the all the above, the court of appeals decided to uphold the complaint and reject the opposition lodged by María Catalina Arechabala Arechabala against the application for “ARECHABALA” in Class 33 on the grounds that it was unfounded.

This decision is interesting because it provides clear guidelines about the registrability of names and the conditions under which the consent of the name holder or his heirs should be required. It also ratifies the judicial decision-making sovereignty of each country, as it makes clear that no local or international rule authorizes an Argentine judge to decide on the legitimacy of an expropriation that took place abroad.