Actor Pedro Pascal is the latest actor to enforce his intellectual property rights, after taking issue with Chilean distiller David Herrera for acquiring and using a registered figurative trade mark for a bunch of grapes and the words ‘PEDRO PISCAL’, a play on words with the actor’s name and the Chilean brandy called ‘pisco’. Herrera’s mark was registered in classes 33 and 35 for ‘grape brandy’ and ‘business administration and management’ respectively.
A year after Herrera acquired his controversial trade mark registration, Pascal sought and acquired his own registered trade mark in Chile for his own name in classes 3, 25, 28, and 41 for various goods and services relating to merchandising and toys, television and film, toiletries and cosmetics and clothing. Once Pascal discovered Herrera’s similar registration, he instructed lawyers to file an invalidation action on the basis of bad faith, stating that Herrera’s mark seeks to take advantage of Pascal’s reputation and that his mark creates an obvious likelihood of confusion.
It appears that this isn’t the first instance of the two parties going head-to-head in legal disputes, with Pascal having taken Herrera to Court previously in a successful domain revocation action. Ultimately, whether Pascal is successful in his invalidation action will depend on the strength of Herrera’s defence, who states that he came to the name from combining the name of the grape used to distil pisco, the ‘Pedro Jiménez’ grape, with a simple play on words with the Chilean actor and the alcoholic beverage.
While proceedings are still under review at the Chilean Instituto Nacional de Propiedad Industrial (Chile’s domestic Intellectual Property Office), it is reported that both parties are confident in the merits of their respective arguments, and the decision may come down to the wire. Given the influx of celebrities enforcing their intellectual property rights of late, there may well be further developments and precedents set in trade mark law across different territories this year alone.
If you have any questions on the above, or if you need any advice or support in respect of your own Intellectual Property, please do not hesitate to contact the team at McDaniels Law on 0191 281 4000 or legal@mcdanielslaw.com.
