Trademarks – The importance of expressing grievances
By Belén Sorrentino and Sol Baudino.
The Federal Civil and Commercial Court upheld the decision of the lower court, which rejected the claim filed by Mr. Diego Ezequiel Méndez seeking the revocation of the Resolution of the National Institute of Industrial Property (INPI by its acronym in Spanish). The resolution refused the trademark application for “La Luisita” in class 30 of the International Nomenclator. (Chamber III, Méndez, Diego Ezequiel v. INPI s/Denegation of registration. Case No. 12.503/2018, 16/06/22). To decide in this way, the Chamber emphasized the expression of grievances made by the plaintiff.
First instance ruling
The judge pointed out that the Trademark Office has decided to deny the trademark application based on a technical report, which established that the intended sign was covered by the provisions of article 3-point b) of Trademark Law No. 22.362, due to the precedent of the trademark “Luisito”, granted in the same class.
In turn, he expressed that the extension of the signs involved are similar as both “Luisito” and “Luisita” share all their letters except the last one, being the root “LUIS” the easiest part to retain for the public consumer.
Even though graphically the design of the trademark “Luisito” is inside an oval and “La Luisita” inside a square, and being that one is in feminine and the other in masculine, for the judge these does not make a significant difference between them. In addition, he argued that neither the colors of both are enough characteristics so as to affirm that they are undoubtedly different trademarks.
Regarding the “doctrine of estoppel”, the fact that the INPI has granted trademark registration to other applications that included the term “Luis” does not compel the administrative entity to maintain its criterion if, after a relevant analysis, it considers that there is a degree of confusing similarity between the trademarks. The magistrate remarked that, in this case, the doctrine does not have the scope it has in other fields of law, and therefore, the conduct of the INPI cannot be a reason to legitimize the concurrence of confusingly similar trademarks affecting the protection of the interests of the consumer public.
Court of Appeal ruling
The plaintiff appealed the first instance judgment, and in its expression of grievances stated that the judgment omits to consider that the trademarks share a term considerate as a “commonly use term” in class 30, which cannot be monopolized by anyone. In his writ of appeal, he claimed that the magistrate was wrong in stating that both trademarks share the same root when, in fact, his trademark has the term “La” as root and the one cited as a precedent has the term “Luis”. That even though the ultimate purpose of the trademark law is the protection of the public consumer, it is necessary to analyze and assess the evidence that proves that both trademarks coexisted in the market for a very long time and in a peaceful way. Finally, he questioned the awarding of costs on him, since he considered himself with legitimate reasons to timely apply for the registration of his trademark and then defend it in court.
In response to the arguments expressed by the appellant, on June 16, 2022, the Chamber adopted the following decision:
- Expression of grievances
The plaintiff does not meet the substantiation requirements foreseen in the article 265 of the Civil and Commercial Procedural Code. To justify this decision, the Chamber highlight that the appellant insists on raising issues that have already been resolved by the first instance judge, without expressing any element that puts the adopted decision in crisis.
- Commonly used terms
In his writ of appeal, the appellant pointed out that both trademarks share a term of common use and that it has been registered at least in 15 trademarks, but he didn’t refute any of the arguments made in that sense by the lower court. The fact that it is a term of common use in the class does not imply that any trademark application that includes it must be admitted.
- Doctrine of estoppel
Regarding the “doctrine of estoppel”, the Chamber made the same assessment as the magistrate of first instance: the doctrine does not have in trademark matters the scope it has in other fields of law and therefore the decisions adopted with respect to other registration requests do not invalidate the administrative entity to change its criteria if after a new analysis it considers that there is a sufficient degree of confusing similarity to deny the request.
- Confusing similarity between trademarks
The Chamber agreed with description of the characteristics of both signs from the different levels of appreciation made by the first instance ruling, and this was not duly challenged by the appellant in his expression of grievances.
- Root of the trademarks
The first instance judge has decided that both trademarks share the root “Luis” and once again, this has not been duly countered by the appellant in the appellation.
Therefore, the Court decided that the appeal should be declared void under the terms of Article 266 CPCCN.
In this decision, the Court proved how important is to argue in an accurate way the expression of grievances in order the appeal to be duly grounded, being relevant that the one that appeals a decision provides new grounds to those already mentioned in the first instance, this will allow the judges of the second instance to assess the damages that the previous decision has caused to the appellant. Thus, conforming a legal exposition that contains a reasoned and critical analysis of the appealed resolution tending to demonstrate that it is mistaken, unfair or unlawful.
For further information please contact: bsorrentino@ojambf.com and/or sbaudino@ojambf.com.
