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Global Report: Latin America
In the News
ARGENTINA: Foreign Trademarks Protected against
Bad Faith Registrations
Division I of the Federal Court of Appeals in Civil
and Commercial Matters of the City of Buenos
Aires confirmed the lower court’s decision in Velasco
Baquedano, Juan Ignacio v. Agrícola San
José de Peralillo S.A. on April 5, 2016. The decision
allowed an opposition filed by the defendant,
owner of the marks ANTU and ANTU NINQUÉN in
Chile and other countries, but not in Argentina.
The plaintiff filed a complaint requesting that
the opposition filed against his trademark
application for ANTU in Class 25 be declared
ungrounded. He said that he was well-known in
the wine industry and that at the time of filing
the opposition, the defendant had no local
rights to ANTU.
The defendant argued that it had registered
the marks ANTU and ANTU NINQUÉN for wines
in Chile and the United States, and ANTU in
the European Union, before the plaintiff’s
application. The company said that the ANTU
NINQUEN wine was exported from Chile to 21
countries, having received awards from 2005
to 2011. The company also claimed that it had
opposed the plaintiff’s mark as it was a slavish
imitation of their mark.
The Court of First Instance rejected the complaint.
On appeal, the Federal Court of Appeals
held that notoriety required two elements:
broad knowledge of the sign (to be known by
all the public and not only by the purchaser of
the relevant market) and people spontaneously
connecting the sign with the product.
The Court of Appeals ruled that the notoriety of
the opposing mark had been proven. Moreover,
it added that, upon conducting an Internet
search of the keywords “ANTU wines,” it found
several articles and photos of the products sold
by the defendant, and an even larger number
of articles and photos in the case of the mark
ANTU NINQUÉN.
The court added that the marks were identical
and protected wines. It mentioned that the Mapuche
word ANTU (related to the sun) was not
commonly used and people could be confused
regarding the origin of the products.
The Court of Appeals concluded that it was
reasonable to accept that the plaintiff must
have known of the existence of the foreign
mark ANTU, pointing out that such knowledge
constituted an act of unfair competition.
Finally, the court held that, on account of the
circumstances of the case and regardless of
the local and foreign renown and reputation
of the mark, the plaintiff had tried to copy
the foreign trademark ANTU, adding that the
plaintiff had illegally attempted to register the
trademark ANTU in order to unlawfully benefit
from its prestige and renown.
The case is an example of the protection granted
by Argentine courts to foreign marks that
have not been locally registered against bad
faith registration attempts.
Contributor: Diego Laurini
Estudio Gold, Buenos Aires, Argentina
INTA Bulletins Law & Practice—Latin America
Subcommittee
Verifier: Claudia Serritelli
Estudio Chaloupka, Buenos Aires, Argentina
INTA Bulletins Features Subcommittee
BRAZIL: New Regulation on Trademark Disclaimers
Comes into Force
On June 1, 2016, Resolution No. 166/2016,
issued by the National Institute of Industrial
Property (INPI), came into force, setting out
new rules regarding trademark disclaimers in
Brazil.
The resolution establishes that all trademark
registrations will be issued containing the
following standard disclaimer: “the protection
conferred by this registration is limited by
article 124, paragraphs II, VI, VIII, XVIII and
XXI, of Law No. 9.279, of May 14, 1996.” The
paragraphs contained in the default disclaimer
refer to legal impediments based on lack of
distinctiveness, such as paragraph VI, which
deals with the prohibition against the registration
of colors and their denominations unless
displayed or combined in a peculiar and distinctive
fashion.
Before this resolution, INPI had issued different
types of disclaimers for each case, which
might explain, for instance, that the mark was
being granted with protection as a whole or
that a certain part or element of the mark remained
free.
The standard disclaimer now adopted will not
contain an explanation from INPI as to which
part has been protected and what has been
left out. It will also not contain any indication
of which specific legal impediment was considered
by the examiner.
All future registrations as well as applications
granted as of February 23, 2016, which had
the corresponding certificates of registration
still pending at the date of entry into force
of the resolution, will receive the standard
disclaimer. Certificates of renewal and official
copies of old certificates will also feature the
default disclaimer.
INPI indicated on the resolution that the standard
disclaimer is expected to expedite the
examination of trademark applications and
create consistency in future disclaimers issued
by the Office.
However, there may also be downsides. The
number of conflicts brought before INPI and
before judicial courts may dramatically increase,
since there will be space for a wide
range of interpretations regarding the scope of
protection conferred by the registrations.
Some critics have stated that INPI has transferred
to the judiciary its duty of examining the
elements that deserve protection in a given
mark when issuing the appropriate disclaimers,
which is prohibited by the Brazilian legal system,
on both constitutional and infra-constitutional
levels.
The market and IP practitioners will have to adjust
their practices and, where there is a lack
of clarity, resort to the judiciary.
Contributor: Conrado Vieites Novaes de Freitasi
Ouro Preto Advogados, Rio de Janeiro, Brazil
Verifier: Rodrigo Borges Carneiro
Dannemann Siemsen Bigler & Ipanema Moreira,
Rio de Janeiro, Brazil
INTA Bulletins Law & Practice—Latin America
Subcommittee
24 INTA Global Report, February 2017