A trademark in its path to the logic
Written by abalbo@ojambf.com
The trademarks world is in constant dispute, where brand identity and trademark registration intertwine in a sort of never-ending legal battle.
In this sense, Chamber No. I of the Federal Civil and Commercial Court of Appeals witnessed a case[1] where a famous water company called ECO DE LOS ANDES applied for a trademark registration, which was denied.
In this article, we explore the details analyzed by the Chamber, an interpretation that can be considered emblematic and interesting when it comes to registration matters.
It all started when the company ECO DE LOS ANDES S.A. applied for a trademark registration for the terms “ECO DE LOS ANDES LOGICA USEMOS UNA NUEVA LOGICA” (ECO OF THE ANDES LOGIC, LET’S USE A NEW LOGIC), in classes 16 and 32, together with the following design:
However, the TM Office denied said application, on the grounds of Trademark Law No. 22.362 article 3º paragraph d), and on the Regulatory Decree No 97/2001 article 11 of the Ecological, Biological and Organic Production Law No. 25.127.
Article 3º of the trademark legislation in its paragraph d) prohibits the registration of signs that may mislead as to the nature, properties, merit, quality, processing techniques, function, origin, value or other characteristics of the goods or services to be distinguished.
On the other hand, Article 11 of the Decree provides that the terms “biological, ecological, organic, eco, wood, furniture, and paper” may not constitute trademarks or be included in any trademark, but excludes trademarks that have already been registered prior to the enactment of this Law.
Thus, far from agreeing with the decision of the administrative authority, ECO decided to file actions before the Court against the TM Office (The National Institute of Industrial Property), seeking that the denial resolutions be revoked to obtain the registration of the applied trademark.
First Instance judge overruled the claim, understanding that none of the exceptions provided by the legislation applied to the trademark in question, and therefore it had been properly denied by the TM Office.
It was far from over for ECO, who appealed the decision, claiming that the legislation was being wrongfully interpreted.
The Chamber’s analysis
Chamber I provided a thorough analysis of each of the arguments invoked by the TM Office to deny the trademark, in order to review whether the trademark complied with the legal requirements to be registered or not.
Mineral spring water according to
Trademark Law, article 3º paragraph d):
The company argued that the applied trademark did not constitute a “deceptive mark” that could mislead public consumers. Visually, the logo highlighted the word “ECOLOGIC”, formed by the combination of “ECO” and “LOGIC” with the same font and color. The Chamber, after analyzing the sign, pointed out that it could also be read as “ECOLOGICA DE LOS ANDES, USEMOS UNA NUEVA LÓGICA” (ECOLOGIC FROM THE ANDES, LET’S USE A NEW LOGIC).
As the term “ecological” refers to all products or activities carried out without chemical products that do not harm the environment, the Chamber pointed out that natural mineral spring water, which was ECO DE LOS ANDES’ product, by definition, is ecological, since it does not require artificial treatments for its consumption and emerges spontaneously from the earth.
In addition, the Argentine Food Code provides a definition for “natural mineral water”, stating that it may not be artificially treated, except for specific operations to maintain its purity and its essential characteristics.
The fact that the trademark “ECO DE LOS ANDES” was already registered before the local TM Office, to identify mineral spring water, was not a minor detail for the Chamber. Water that, as previously mentioned by definition is an ecological product –as we will continue to see shortly–. Thus, linking it to ecology did not imply an attempt to deceive the public consumer.
Regulatory Decree 97/2001, article 11:
The regulatory legislation defines “ecological, biological, and organic” as any system of agricultural production or harvesting and capture that is sustainable over time, through reasonable resource management, without involving chemical or toxic products.
The aim of Article 11, when providing that these terms cannot be included as trademarks, is to prevent that products of agricultural origin such as fibers, food, wood, or furniture, are understood as ecological, biological, or organic. And it is clear to the Court that spring water is not an agricultural product, under the provisions of the legislation and its regulatory decree.
Decision rendered
The Federal Civil and Commercial Court of Appeals concluded that the registration of “ECO DE LOS ANDES LOGICA USEMOS UNA NUEVA LOGICA” trademark and its design was not prohibited by Trademark Law, article 3º, paragraph d). In addition, it pointed out that the Ecological, Biological or Organic Production Law and its Regulatory Decree 97/2001 were not applicable to natural mineral spring water, which has its own minerals provided by nature, does not need any treatment for its consumption, and emerges from the earth without the need to be artificially extracted.
Ergo, the Court revoked First Instance ruling and ordered the granting of the applied trademark by ECO DE LOS ANDES S.A.
Lesson learned
The ECO DE LOS ANDES v. the National Institute of Industrial Property case highlights the importance of protecting and defending commercial identity by means of trademark registrations. Trademark laws and regulations are fundamental to ensure that companies can identify their products or services on the market.
In addition, this case reinforces the need to seek specialized legal advice for trademark registrations, to achieve proper compliance with legal requirements and adequate defense of industrial property rights.
The commercial identity battle is fought every day in today’s business context, and this exemplary case shows how a rigorous analysis of the applicable legislation is vital to keep brand identity real.
Conclusion
This case not only constitutes a precedent for future disputes but also highlights the importance of the correct interpretation of the law, to ensure the proper protection of commercial identities in such a competitive trademark world.
[1] “ECO DE LOS ANDES S.A. v. National Institute of Industrial Property. Chamber I of the Federal Civil and Commercial Court of Appeals. 4/10/2022.
More information: abalbo@ojambf.com
