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07 November 2011
On February 18 2011, in its decision in Twentieth Century Fox Film Corp v Pouyau, the Federal Court of Appeals in Civil and Commercial Matters, Division II, granted a preliminary injunction against a registered trademark on the basis that it is prima facie identical to a well-known trademark owned by a third party.
Section 16.2 of the Agreement on Trade-Related Aspects of IP Rights (TRIPs) refers to well-known trademarks as follows:
"In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark."
In Argentina, well-known foreign trademarks were protected even before TRIPs came into force, with the courts holding that "they have traditionally deserved a special protection, insofar as it is possible… that third parties take advantage of other's prestige".
Moreover, Section 50 of TRIPs establishes that the judicial authorities shall have the authority to order prompt and effective provisional measures so as to prevent the infringement of any intellectual property right from occurring. Furthermore, the judicial authorities shall have the authority to adopt provisional measures ex parte where appropriate, in particular where any delay is likely to cause irreparable harm to the right holder or where there is a demonstrable risk of evidence being destroyed.
Based in this provision, the court granted the preliminary injunction and ordered Mr Pouyau to stop using his registered trademark, DUFF. This ruling was of particular interest as:
In its decision, the Federal Court of Appeals took into account that the plaintiff was the owner of the DUFF trademark in several countries, thus demonstrating the creditability of its right, especially when taking into consideration the widespread popularity of the television series The Simpsons and the reference made therein to the beer consumed by the main character.
Based on the above, the Federal Court of Appeals revoked the judgment of the first instance court and acknowledged that the plaintiff was entitled to protection for the use of a trademark associated by the public with the aforementioned series. The court therefore decided to order - even against a registered trademark - the requested preliminary injunction.
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