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20 April 2015
In many instances a trademark cannot be registered even if it has enough distinctive capacity with regard to the sign in itself.
This occurs when seeking to register a trademark that is identical or similar to one already registered or previously applied for, in order to distinguish the same products or services.
An essential feature of a trademark is to be able to differentiate it from other confusingly similar trademarks and authorise its owner to exclude others from the use of identical or similar trademarks.
This right applies, in principle, when confusingly similar trademarks distinguish identical products or services.
Sections 3(a) and 3(b) of the Trademark Law establish that a trademark cannot be registered when it is similar or identical to one already registered or previously applied for in order to distinguish the same products or services.
In turn, Section 16.1 of the Agreement on Trade-Related Aspects of Intellectual Property Rights provides that: "In case an identical sign is used for identical goods or services, the existence of likelihood of confusion will be presumed."
In cease of use or cease of opposition actions, the intervening court makes a comparison between the conflicting trademarks:
There is no absolute rule for the criteria which determine whether two trademarks are confusingly similar. Appreciating the likelihood of confusion is easy in the case of two identical trademarks for identical products or services. However, in cases of similarity, what may be confusingly similar for some people may not be for others.
In order to reduce subjectivity, books of authority and case law have elaborated guidelines to evaluate whether a trademark may cause confusion. On October 29 2013 the Federal Court of Appeals in Civil and Commercial Matters (Division 2) ruled in Crivelli v Ini on Cease of Opposition to Trademark Registration on the application for the registration of the trademark M MIKAH XI to distinguish all Class 25 products, which the owner of the trademark MICA opposed – MICA is also registered under Class 25 – considering that the latter might be confusingly similar to the M MIKAH XI trademark.
In its decision the court highlighted four fundamental principles to consider when determining the likelihood of confusion:
Based on these principles and other considerations, the court concluded that it is evident that the sign sought and the registered trademark were confusingly similar. Consequently, it upheld the first instance judgment that had dismissed the claim on cease of opposition.
For further information on this topic please contact Daniel R Zuccherino at Obligado & Cia by telephone (+54 11 4114 1100) or email (firstname.lastname@example.org). The Obligado & Cia website can be accessed at www.obligado.com.
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