In continuation of our two part series on the Gandhi Trademark opposition filed in Ecuador, in this post we will look at the provisions in Ecuador law and the effect they are likely to have on the outcome of the opposition petition.
We would like to thank Jeremy Phillips, founding member of IP Kat and Patricia Covarrubia from IP Tango immensely, for taking us through Ecuador’s trademark law and the provisions which would apply to this particular case.
As stated in our earlier post, Indian law seems to be stacked against the opposition lawyers since
- The Emblems and Names (Prevention of Improper Use) Act, 1950 does not extend beyond India and when it does it does not extend beyond the citizens of India
- If the right of publicity is invoked in this case the opposition lawyers will have an uphill task trying to prove valid interest as post mortem publicity rights can be invoked by the descendants of the deceased or his/her authorised representatives not the general public at large.
Position in Ecuador
- Under Ecuador law, officially recognised flags and emblems of any State may not be registered as a trademark without the permission of that State.
The provision only protects flags and emblems. Mahatma Gandhi however is the Father of our nation; he is neither a flag nor an emblem. His name is protected under Indian law through, The Emblems and Names (Prevention of Improper Use) Act, 1950 (hereinafter “Emblems and Names Act”). No equivalent provision to protect names of national icons appears to exist in Ecuador’s trademark legislation. Since Mahatma Gandhi is neither a flag nor an emblem his name is not protected under Ecuador’s trademark law.
- Further, another provision states that signs may not be registered as trademarks if they violate third party rights such as those, “that consist of the full name, pseudonym, signature, title, nickname and caricature, likeness or portrait...except where proof is given of the consent of that person or his heirs. This provision supports the case of the opposition to some extent but it is silent as to whether it applies only to living persons or whether it extends to persons beyond their lifetime.
If it does extend beyond one’s lifetime then, as we mentioned in our earlier post, Gandhi would probably not have consented to such commercial use of his name. However since this provision applies to all persons and not just to national symbols, I think for a case to succeed under this provision the person whose name is being used or his/her heirs would have to bring the case and the general public would probably not have standing.
- Finally, Article 66 (18) of the Ecuador Constitution protects the right to good honour and good name. It protects the image and voice of every person. Essentially this provision is a right of publicity provision, and just as we mentioned for the provision above, these rights can usually be invoked by the persons themselves or their heirs and not the public at large.
It is clear that neither Indian nor Ecuador law fully supports the case of the opposition. The two main defeating factors are: that the Indian Emblems and Names Act does not extend beyond India and Indian citizens and Ecuador’s trademark legislation protects flags and emblems of other countries but not names of national icons. The matter will now be heard on October 10.