First decisions on trademark oppositions issued by Argentine National Institute of Industrial Property
Jueves 23 de abril de 2020
We are pleased to share the English version of the above-mentioned article, "First decisions on trademark oppositions issued by Argentine National Institute of Industrial Property"(*), published in Spanish by Abogados.com.ar and written by our partner Raquel Flanzbaum.
FIRST DECISIONS ON TRADEMARK OPPOSITIONS ISSUED BY ARGENTINE NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY
Almost exactly two years after Emergency Decree No. 27/2018 empowered the Argentine National Institute of Industrial Property (INPI) to decide on trademark oppositions, in January 2020 the Office issued the first decisions to that effect.
Under the old procedure, in force for nearly 120 years, it was the courts, in a regular lawsuit brought by the applicant against the opponent to have the opposition declared groundless, who decided whether the oppositions were warranted or not. This system was criticized as being too slow and expensive. Under Emergency Decree No. 27/2018, later ratified by Law No. 27,444 of May 2018, henceforth the INPI would decide these issues, with an appeal before the Federal Court of Appeals.
Now we finally have a first look at how INPI will resolve trademark oppositions. This first round comprised nine opinions, all issued on January 8, 2020. The respective decisions, supported by those opinions, were notified in Trademark Journal No. 4944 of February 5, 2020. These opinions attract the greatest interest, since they set out the reasoning behind each decision. Although the opinions were nine, the issues resolved were actually seven, because three cases involved the same conflict in three different classes.
In short, these were the cases, where the mark listed in the first place is the one applied for, and the second mark is the opponent:
• "CALCAREO" v. "CALCAREO", both in class 33: held to be confusingly similar
• "MIO HELADOS" ("ice creams", class 30) v. "MIO HELADOS" ("ice creams, ice creams, frozen yogurt, etc.", class 30) and "MIO HELADERIA" ("ice cream services", class 43): held to be confusingly similar
• "WATCH ME" (Class 14) v. "WATCH:ME" (classes 14, 16, 35, 37 and 38): held to be confusingly similar
• "POLO NORTE" (class 30) v. “POLO NORTE " (classes 30 and 35): held to be confusingly similar
• "DESDE INDIA" (class 24) v. "INDIA STYLE" (classes 20, 24, 25 and 35): held not to be confusingly similar
• "POWER RED" v. "POWER ADE", both in class 32: held to be confusingly similar
• "VICTORIA'S SECRET" (Class 3) v. "VICTORIA' SECRET" (classes 3, 9, 14, 18, 20, 21, 22, 24, 25, 26, 35, 38 and 41): held to be confusingly similar
While the first four cases were quite straightforward, the remaining three were more nuanced. In the case "DESDE INDIA" (which means “From India”) and "INDIA STYLE", the marks were held not to be confusingly similar because the word “India” was considered to be evocative and therefore could not be monopolized by the registrant, and moreover was included in third-party registrations in the same class ("LUNA INDIA", "INDIAN OUTLET" and "INDIAN KINOR"). To declare likelihood of confusion between "POWER RED" and "POWER ADE", INPI took into account that the first part of the marks at stake was identical, the marks had the same length, the pronunciation of “red” and “ade” was similar, and the extended use of trademark “POWER ADE”. As for "VICTORIA'S SECRET", it was taken into consideration that the marks were identical and belonged to the same class, as well as the reputation of the opponent registration; there it was also held that that notoriety of “VICTORIA’S SECRET” enabled the opponent to oppose to the application for all goods of Class 3, regardless of the fact that it was registered only for perfumery products.
What do we learn from these first decisions?
• All opinions have the same logical structure, divided into three parts: background, analysis and conclusions. The background outlines the applicant and opponent's actions and arguments, the evidence offered and presented, the submission of the final arguments or lack thereof, and – this is very important– the finding of the existence, validity, ownership and scope of the opposing marks by INPI itself. The analysis sets out the reasoning underlying the opinion. Finally, the conclusion briefly states the corollary of the arguments, i.e. whether it advises to declare the opposition warranted or not.
• All cases are substantiated and cite well-known principles developed by the courts (how to compare the marks; the requirement that the marks must be clearly distinguishable; likelihood of confusion in one of the usual levels –sound, meaning or sight– will suffice to inhibit coexistence, etc.), including the oft-quoted saw that the judges need not consider all the arguments of the parties but only those that are conducive to the correct solution of the case.
• Both the statement of facts and the reasons set out in the analysis are very similar in style and substance to those made in court decisions, but are shorter.
• The Office seems to be reluctant to accept all the proof offered and relied instead on its own determination on the existence, ownership and scope of the registrations asserted by the opponents, holding the remaining evidence proposed by them to be either unnecessary or unconducive.
At the time of preparing this article these decisions are not final as the parties have a 30-day term to file an appeal before the Federal Courts.
(*) "A shorter version of this article appeared in the International Trademark Association’s INTA Bulletin on April 1, 2020."