Trademarks – The burden of proof in precautionary proceedings
By Josefina Piñeiro.
In the ruling, Second Division of the Federal Court of Appeals in Civil and Commercial Matters analyzed whether the precautionary measure requested by the firm Giorgetti & Bruno SRL was appropriate or not.
The plaintiff would have based the measure on an alleged transfer of ownership of the mixed sign “Los Totora” —and star— fraudulently (due to an excess of powers) and at a vile price to the managing partner. For this reason, the firm requested the cessation of preventive use of the sign, in addition to also requiring the impediment to make contracts of all kinds: advertise, sell or license the trademark.
In order to analyze whether the requirements of the precautionary measures were met, the Court provided its analysis in light of Article 50 of the Agreement on Trade-Related Aspects of Intellectual Property (ADPIC), which enables judges to adopt prompt and effective interim measures, designed to prevent the occurrence of infringement of any intellectual property right and preserve relevant evidence, taken without hearing the other party.
With respect to the plausibility in law, the Court established that there was no evidence that the transfer had been carried out fraudulently, since the administrative file did not show that the managing partner did not have the powers to make the contested assignment.
Likewise, he stated that the risk in the delay does not cross the threshold of the hypothetical and conjectural, since the creation of a new musical ensemble using the trademark “LOS TOTORA” —and star for its individualization— that could generate an irreparable burden for the plaintiff.
On the other hand, it rejected the claim to consider the sign as a facto trademark, for not having accredited the requirements of public, peaceful and continued use.
It should be highlighted that the judges have prudently warned that we are not facing a typical conflict of trademark comparison, but that it is a complex problem of a corporate nature that deals with the excess or not in the powers of the assigner. Ergo, it results from the ruling that the judges have the duty to decide on the merits of the matter —whether corporate, trademark, or whatever— by means of a final ruling.
Each of the arguments made, not only in trademark matters, must be correctly accredited when requesting a precautionary measure. Needless to say, our legislation establishes that the parties have the burden of proving the facts invoked, in accordance with article 377 of the Civil and Commercial Code of Procedure of the Nation.
In addition to this, in the particular matter that concerns us, the allegation that it is a facto trademark entails per se the imperative need to document that the trademark has been in constant, continuous and uninterrupted use over time.
Considering that the precautionary requirements that justify the cessation of use of the trademark were not configured, and in which case the claim made by the plaintiff was not proven, the Federal Court rightly decided to reject the intended precautionary measure.
For further information please contact: jpineiro@ojambf.com.
[1] “Giorgetti & Bruno SRL c/ Bruno, Julián Javier s/precautionary measures”, Second Division of the Federal Court of Appeals in Civil and Commercial Matters, May 5, 2022.
