Individuals Names and the Prohibition of Article 3 Subsection h: Who Wins?

Diego César Bunge filed a trademark application for ESTUDIO BUNGE and ESTUDIO BUNGE & ASOCIADOS to cover legal services in class 45, but Félix César Bunge opposed on grounds of lack of legitimate interest of the applicant and on article 3 subsection h of the Trademark, which prohibits the registration of a trademark when it includes “the name, pseudonym, or portrait of a person without their consent, or that of their heirs up to and including the fourth degree.” The opponent argued that the eventual registration of the trademarks would cause him damage due to the monopolization of the surname "Bunge".

On December 22, 2022, Division I of the Federal Court of Appeals in Civil and Commercial Matters upheld the first instance decision that had declared the opposition ill founded.

The court analyzed the requirements for applying the provisions of article 3 subsection h of the Trademark Law and its implications. The Court held that legal commentators and case law outlined how and when the prohibition applies. In this sense, it stressed that, in the absence of a trademark registration, any homonyms may request the registration of their surname or both their name and last name without prior authorization of those sharing the same names. In other words, if someone files an opposition against the registration of a name and last name, and the latter does not prove the existence of a prior right, then the trademark application must be granted.  The court added that the only exception to this rule is when the surname has become famous or well-known.

In this case, the courtconsidered that Félix César Bunge did not prove the prior registration of any trademark similar to those applied for, nor the existence of any registration containing the term "estudio" in class 45 that also included the last name "Bunge". Moreover, the court considered that the well-known status of the surname had not been proven either.