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06 June 2011
A trademark consists of any distinctive sign, symbol or device affixed by a manufacturer to the goods that it produces or uses in connection with services rendered in order to identify such goods or services in the market. The ownership of a trademark and the right to the exclusive use thereof are acquired by registration in accordance with Section 4 of the Trademark Law (22,362).
Determining whether a trademark qualifies for registration depends on its distinctive capability. In this sense, certain signs are considered unregistrable as trademarks because they are descriptive or necessary for the product or service in question.
On rare occasions, a descriptive or necessary sign may be used to such an extent that it acquires new significance or secondary meaning. The acquisition of such secondary meaning is a question of fact.
In this sense, the primary meaning is that which is inherent to the sign, and therefore cannot be registered as a trademark when it is descriptive or necessary. The secondary meaning acquired through use is that which provides distinctive character, making it possible to become a trademark.
The doctrine of secondary meaning was first established by the UK courts. In most continental law jurisdictions, including Argentina, signs are considered to be distinctive or non-distinctive, and the doctrine of secondary meaning has not been accepted as in Anglo-Saxon law. However, although the Trademark Law does not expressly accept this possibility, if a given sign has acquired secondary meaning, and thus distinctive character, it could be registered as a trademark.
In Unilever NV v Laboratorio Cuenca SA (Case 1,135, July 1 2010), Division 1 of the Federal Court of Appeals in Civil and Commercial Matters held that in certain cases, signs which lack inherent distinctiveness can acquire distinctiveness and thus be registered as trademarks.
This possibility has been foreseen in Article 15.1 of the Agreement on Trade-Related Aspects of IP Rights, which states that: "Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use."
In the case at hand the court held that plaintiff Unilever had proven that it had used the trademark SUAVE ('soft') since 1999, and that since that time it had been marketed through national supermarket chains and wholesalers, and was accepted by consumers in the segment.
Taking into account these facts, the court decided that the trademark had acquired secondary meaning in regard to the shampoo at issue, since it was clear that consumers did not consider the term 'suave' to be a mere qualifying adjective.
The judgment also highlighted that the consumers' reaction to the SUAVE trademark – the main aspect, according to the court – was clearly in favour of acknowledging the trademark capacity and distinctive character of that sign.
As a consequence, the court concluded that signs which originally lack inherent distinctiveness can acquire that distinctiveness and therefore be registered as trademarks.
However, the court did rule that the trademark at issue had an intrinsic weakness because its owner would have to tolerate the presence in the market of other products with trademark value including the same denominative element ('suave') with additional characteristics to make them different, provided that they did not create direct or indirect confusion or disregard the good faith shown towards consumers.
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