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7 July 2015Trademarks

‘Zorro’ trademark put to the sword in EU

An EU-wide trademark for the term ‘Zorro’ has been thrown out after it was found non-distinctive.

The Office for Harmonization in the Internal Market (OHIM) invalidated a Community trademark (CTM) for the term covering entertainment and printed matter.

According to the ruling, when a consumer sees the term ‘Zorro’ he or she will assume that the story of the fictional character is being told rather than recognise the term as an indicator of origin.

‘Zorro’, which is Spanish for ‘fox’, is the secret identity of Don Diego de la Vega, a character created in 1919 by US writer Johnston McCulley. He is dressed in a black cape and mask and carries a sword.

US-based Zorro Productions licensed to Sony Pictures some of the intellectual property rights associated with the character, and the company has since created a series of films with ‘Zorro’ in the title.

Zorro Productions, owned by John Gertz, is involved in a dispute with Robert Cabell over copyright and trademarks related to the term ‘Zorro’. Cabell is the author of a production called “Z—The Musical of Zorro”.

As part of that dispute Cabell opposed the trademark at OHIM.

More than 30 films related to the “Zorro” works have been released since the original story, including one starring actor Douglas Fairbanks in 1920 and another with Antonio Banderas in 1998.

The decision by the Cancellation Division at OHIM, published on June 26, said: “If a title in question is famous enough to be truly well known to the relevant public where the mark can be perceived in the context of the goods/services as primarily signifying a famous story or book title, a mark may be perceived as non-distinctive.

“A finding of non-distinctiveness in this regard will be more likely where it can be shown that a large number of published versions of the story have appeared and/or where there have been numerous television, theatre and film adaptations reaching a wide audience,” the division added.

Zorro Productions had not responded to a request for comment at the time of publication, but WIPR will update the story should the company get in touch.

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