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Metallica Wins Battle of the Brands in Chilean Trademark Fight

Oct. 4, 2019, 7:43 PM

Heavy metal rock band Metallica soon will be able to sell T-shirts and other apparel stamped with their famous slashy logo in Chile after winning a trademark battle that’s lasted more than a decade.

Chile’s Supreme Court backed the group’s request to annul the graphically and phonetically identical trademark for clothing and footwear registered by Chilean businessman Horacio Mardones. The ruling, announced Oct. 3, marked second time Metallica has battled the businessman in court. The band in 2012 lost an attempt to oppose Mardones’ registration of the brand.

Despite its reputation as a business-friendly jurisdiction with modern intellectual property laws, global brands sometimes have trouble registering their trademarks in Chile. Earlier this year, the Supreme Court rejected Amazon’s attempt to register its Alexa trademark. Chile remains on the U.S. Trade Representative’s Special 301 Report blacklist for a variety of intellectual property issues.

Metallica successfully argued that Mardones’ decision to register an identical brand was not mere coincidence but that he was using the registration to sell band-branded merchandise, Metallica’s attorney, Ricardo Montero of the firm Silva y Cia, said.

“We were able to show that the Metallica brand is well-known abroad and that Mr. Mardones was using the brand in bad faith,” Montero said.

Mardones and his attorney, Hugo Guastavino Varas, could not be immediately reached for comment.

Metallica said the conflict prevented the band from selling its own merchandise at concerts in the South American country where they’ve played four times since 1993. The Rock and Roll Hall of Fame inductees are due to play a fifth concert in Chile in April 2020.

Attorney Francisco Silva, also of Silva y Cia, said the dispute took years to resolve because both the registration and annulment processes had been heard in succession by Chile’s patent office INAPI, the Intellectual Property Court, the appeals court, and finally the Supreme Court.

A similar case today wouldn’t take as long because INAPI and other authorities are more quickly resolving such disputes, Silva said.

Metallica, in a court filing, said it’s one of the world’s most famous and profitable musical acts, having sold 11 million records worldwide and is “one of the four greats of thrash metal” along with Megadeth, Anthrax, and Slayer.

To contact the reporter on this story: Tom Azzopardi in Santiago Chile at correspondents@bloomberglaw.com

To contact the editors responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com; Keith Perine at kperine@bloomberglaw.com