What happened with the “Miel Gibson” trademark case?

The "Miel Gibson" case in Chile involved the marketing of honey using the name and image of actor Mel Gibson, which generated legal controversy. The actor's lawyers requested that his image be discontinued, to which the entrepreneurs agreed, although they were able to continue using the name "Miel Gibson." INAPI made formal observations on the trademark application, requesting consent for the use of Mel Gibson's image and name. Consequently, the initial registration was withdrawn. Another registration application by Paula Mireya Hait Stifel for "MIEL DE ULMO GIBSON CHILE" led to an opposition by Yohana Ivette Agurto González. The registration process for the "GIBSON" trademark was suspended until the resolution of the "MIEL ULMO GIBSON CHILE" case.

INAPI, after hearing the opposition procedure, with a ruling dated 04/06/2024, resolves the following: “(…) 5. That, it is appropriate to reject the opposition based on article 20 letter h) second paragraph of law 19.039, since, although the plaintiff submitted abundant press material in which mention is made of the honey sales business started by the opponent and publications on the social network Instagram, in which the sale of honey by the plaintiff is advertised, these do not allow us to conclude that said use is relevant or has an impact on the market that justifies the granting of an exclusive right over the sign, given that the material submitted by the plaintiff dates, for the most part, from August 2020, not being continuous or sufficient. Consequently, and taking into account that the plaintiff did not submit sufficient evidence to prove the prior use in the national market of the MIEL GIBSON trademark in the field of honey production and sale, the opposition must be rejected. opposition claim based on this ground”; “(…) 11. That, in accordance with the merits of the case and by virtue of the facts that have been proven, this judge has formed the conviction that it is appropriate to accept the claim based on letter k) of article 20 of Law 19,039, since the contested application was filed after impressive coverage in various media outlets of the news relating to the application for a mixed trademark MIEL GIBSON filed with INAPI by the plaintiff in these proceedings, Ms. Yohana Agurto González, who, using her ingenuity and using a play on words, associated the trademark Miel Gibson in reference to the famous actor Mel Gibson.For this reason, given the overall configuration of the expression MIEL GIBSON that she associated with the product and its marketing, it is practically impossible that the defendant, by mere chance, would have requested a name that was graphically and phonetically decisively similar and also associated with the product honey and its marketing. Furthermore, it should be noted that, considering the evidence provided in these proceedings, specifically regarding the publications made by both the plaintiff and the defendant on their respective Instagram accounts and which promote the marketing of honey, it has been established that granting the registration to the defendant in this case would turn said asset into a tool to prevent the plaintiff from legitimately using the expression she created and, in this way, would be hindering the commercial development of the latter, especially if it has also been proven that the defendant is a competitor of the plaintiff in the honey marketing sector. In the opinion of this judge, these antecedents allow us to conclude that the trademark application was filed in violation of the principles of fair competition and business ethics, as this is not attributable to chance or coincidence, but rather to the defendant's attempt to register it, knowing that it belongs to a third party. Therefore, the claim based on this ground must be upheld"; and "12. That, in view of the foregoing paragraphs, it is also appropriate to accept the opposition claim based on the violation of letter f) of article 20 of Law No. 19,039, since the fact of granting the requested trademark will mislead or deceive the consumer public, especially with respect to the business origin of the products it seeks to distinguish. Having resolved the matter related to the file of “MIEL DE ULMO GIBSON CHILE” and rejecting the registration of said trademark, the processing of the files of the trademarks “GIBSON” for classes 30 and 35, which were suspended, continued. In these two files, on July 26, 2024, INAPI issued a resolution in each of these accepting trademark registration, resolving that “from a new examination of the background it is found that the assumptions of the cause are not configured in relation to the requested services, because the previous application cited is rejected, and therefore, the substantive observation is reconsidered." Finally, INAPI granted the trademark registrations requested for the trademark "GIBSON" in classes 30 and 35 by resolution dated August 2, 2024.

From the cases presented, some relevant criteria can be inferred: 1. In the event of a formal observation of the trademark by INAPI, the applicant cannot make substantial modifications to the requested sign, since this would imply altering the specific content of the right being requested (criterion of the impossibility of making modifications to the requested sign once requested). This criterion relates to the concept of priority, with the priority date of any industrial right being the date of filing of the respective application with the Institute. If the sign for which protection is requested were substantially modified or replaced by a different one, a filing date would be artificially assigned to a sign that was materially filed with the application at a later date. 2. The importance of sufficiently proving the prior, real and effective use of the signs - even those not registered - which can be proven according to the INAPI ruling, as follows: "the use required by the standard is that which is manifested in the performance of commercial transactions in a relevant number (not sporadic or apparent), external acts of sale, distribution, storage or serious and effective preparations for the performance of any of said acts. On the other hand, the use must be real, meaning it must have an objective existence and not be apparent; it must be truthful, not simulated. Finally, the use must be effective, that is, relevant or with an impact on the market that justifies the granting of an exclusive right over the sign. These circumstances will be determined by a certain persistence or continuity of market behavior (a certain period of time) and a certain quantification of its consequences (significant profits).