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Alessandri wins battle for ‘Sex and the City’ trademark

23 November, 2012

The Alessandri & Compañía law firm just won a new legal battle in an area where it is already widely recognized, i.e., intellectual property and entertainment law. The Home Box Office (HBO) American company just won an unusual lawsuit: the recognition of Sex and the City as a famous and well known trademark beyond any particular class.

The decision was issued by the National Institute of Industrial Property (Instituto Nacional de Propiedad Industrial, INAPI) on June 27, 2012 and was subsequently confirmed after the October 25 appeal.

HBO filed the case before the Chilean trademark office in November 2009, in opposition to the use of Sex and the City and Sex in the City in a series of products, perfumes and condoms among them, sold in Chile. Last June INAPI rejected the registration of the above trademarks in classes 3, 5 and 10, which cover perfumes, pharmaceutical products and condoms, in view of the graphical and phonetical similarities between them and the famous cinema and TV trademark. The decision was appealed by the applicant, but it was finally upheld last month by the Court of Appeals.

“We believe that it is an important decision, because the court has officially recognized that a foreign trademark, recognized by services such as television series and movies, is so famous that it may not be appropriated by third parties who intend to benefit from its fame, because they confuse consumers, who incorrectly associate said products with the TV series and movies”, explains Rodrigo Velasco Santelices, partner of Alessandri & Compañía. Senior Associate Loreto Bresky adds: “The court confirmed all our arguments and established that the trademark’s fame and widespread recognition goes beyond any specific class”.


Sex and the City was a popular TV series set in New York, which followed the love affairs of four women in their 30’s and early 40’s. It had an enormous commercial success, both in the United States and abroad, and originated two movies in 2008 and 2010.


Alessandri & Compañía has also represented Danjaq, titleholder of the ‘James Bond’ intellectual property rights, defending the ‘Casino Royale’ film trademark. In addition, Alessandri & Compañía regularly defends the interests of Warner Brothers, owner of the ‘Batman’ and associated characters’ trademarks.


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