In a recent decision of the Registrar (O/1216/24), Mezquila USA, LLC successfully rebutted oppositions to its attempt to register the signs ‘Reina del Sur’ and ‘Señor de los Cielos’ (the “Signs”) for tequila (amongst other things). The opponent, Telemundo Network Group LLC, relied on earlier rights said to subsist in both of the Signs for television drama entertainment services and a connected bad faith ground.

The case was relatively unusual as it involved cross examination of Carlos Alberto Agnesi Lopez, the founder and chief executive officer of Mezquila, alongside the more standard consideration of multi-jurisdictional use of the Signs by both parties and the first to file approach adopted in the United Kingdom.

The Hearing Officer found that, prior to adopting the Signs for tequila, Mr Agnesi had been aware of the two television series promoted under the Signs, both of which relate to drug cartels operating in Mexico. He also noted that the Signs were, in turn, a sobriquet adopted by various female drug traffickers and the name of a Mexican drug lord. Despite his knowledge, however, the Hearing Officer found that, although both television series had been offered in the UK, neither had a reputation in the UK (as against other countries in which they were also available) and the opponent did not own goodwill in the UK arising through use of the Signs for them.

Distinguishing Trump International, the Hearing Officer concluded that the applications had not been filed in bad faith where there was a genuine intention to use them for tequila: this was not a case where no explanation was provided regarding the filing strategy and thus where the conduct of the applicant fell below the accepted standards of ethical practice.

Jamie Muir Wood, instructed by Deborah Niven of Gunnercooke LLP and Aina Rabell and Laia Serramià of Delvy Law appeared on behalf of Mezquila USA, LLC.