/ Alessandri helps HBO defend Sex and the City

Latin Lawyer, Thursday, 22nd November 2012

Chile’s Alessandri & Compañía has helped US cable company Home Box Office (HBO) win a rare judgment recognising Sex and the City as a famous and notorious trademark beyond any class.

The decision was handed down by Chile’s Second Instance Court in June and upheld after appeal on 25 October.

HBO lodged the case with Chile’s Trademarks Office in November 2009 in objection to the use of Sex and the City and Sex in the City on a host of products, including perfumes and condoms, produced by a local manufacturer. The manufacturer was represented by independent practitioner Luis Eduardo Concha, who could not be reached for comment.

In June, the Head of the National Institute of Industrial Property rejected the registration of both trademarks in classes 3, 5 and 10 covering perfumes, pharmaceuticals and prophylactics, due to graphic and phonetic similarities between them. The decision was appealed by the manufacturer, but upheld by the appeals court last month.

HBO currently has five more cases pending with the institute concerning variations incorporating New York-style buildings into the trademark. Decisions on the remaining cases are expected within the next six months.

“We think it is an important judgment because the court has recognised officially that a foreign trademark, which is famous for products such as TV shows and films, is so famous it cannot be expropriated in third class by other producers, as it will confuse the consumers and be associated by the show,” explains Alessandri partner Rodrigo Velasco. “Although no registrations were pending for perfumes by HBO in Chile, the court upheld all our arguments and established that the fame and authority of the mark went beyond any class.”

Sex and the City was a popular TV show set in New York that followed the love lives of four women in their mid-30s and early 40s. The show ran to 94 episodes and achieved enormous commercial success, both within the US and abroad, and spawned two feature films in 2008 and 2010.

Alessandri has also represented Danjaq, owner of the James Bond movies rights in its defence of the Casino Royale trademark, and also gives regular counsel to the owners of the Batman trademarks.

Counsel to Home Box Office

Alessandri & Compañía

Partner Rodrigo Velasco and associate Loreto Bresky

Counsel to the manufacturer

Independent practitioner – Luis Eduardo Concha