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31 March 2014
A trademark consists of any distinctive mark, symbol or device affixed by a manufacturer to the goods that it produces, or used in connection with the services it renders, with the purpose of identifying such goods or services in the market.
Under Argentine law, the ownership of a trademark and the right to its exclusive use are acquired by registration, in accordance with Article 4 of the Trademark Law (22,362). Consequently, in principle, if a trademark is not registered, there is no right thereto. However, the system is not so strict that it prevents marks that are in use, but unregistered, from being protected in exceptional cases.
Unregistered marks (or de facto trademarks) are signs that:
This second requirement is essential, because otherwise use of the trademark would be illegal, with legal consequences that differ significantly from those of unregistered marks.
Judges have afforded protection to parties which have not registered a sign, but have long used it, thus consolidating its position in the market and creating goodwill. The courts have granted rights to de facto trademarks in several situations, such as:
In exceptional situations, the courts have granted the owner of a de facto trademark the right to obtain an order preventing third parties from using the trademark.
The Trademark Law implicitly gives value to marks in use, even if not registered – the second part of Section 4 of the law sets out that to "exercise the right of opposition to its registration or of its use, a legitimate interest is required". In this regard, it has been acknowledged that it is not essential to be the owner of a registered trademark in order to file an opposition action, since the owner of a de facto mark which has complied with certain requirements of use to create goodwill can also file an opposition (ie, it has the legitimate right required by law).
To support their rationale of protecting unregistered marks in use, judges have resorted (in addition to the Trademark Law) to the general principles of law and to Section 953 of the Civil Code.
On March 14 2013 Division I of the Federal Court of Appeals in Civil and Commercial Matters, in Grupo Almar SRL v Grupo Alimentario Carbiz SRL, revoked the first-instance ruling refusing a preliminary injunction filed by the owner (Grupo Almar) of an unregistered trademark and granted the requested preliminary injunction.
The first-instance judge had held that Section 38 of the Trademark Law unambiguously requires that, to grant a preliminary injunction, the petitioner be the owner of a registered trademark.
In its rationale, the Federal Court of Appeals held that the principle applied by the first-instance judge is not absolute, as under exceptional circumstances unregistered marks (in this case, the sign PUDDINGS and the associated device) that have been intensely used and have thus created goodwill may deserve some legal protection. Otherwise, the holder of an unregistered mark would remain unprotected against the illegitimate use of the same mark by a third party taking advantage of the holder's reputation or goodwill.
The Federal Court of Appeals also took into account receipts filed by the plaintiff, which provided evidence of the sale of products to two of the most important supermarkets in the country using the sign PUDDINGS and the associated device, which was applied to puddings, at least for the past five years.
For further information on this topic please contact Daniel R Zuccherino at Obligado & Cia by telephone (+54 11 4114 1100), fax (+54 11 4311 5675) or email (firstname.lastname@example.org). The Obligado & Cia website can be accessed at www.obligado.com.
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