Josefina Piñeiro December 5 2022 Court provides lessons on burden of proof in trademark transfer case Ojam Bullrich Flanzbaum | Intellectual Property - Argentina Josefina Piñeiro Intellectual Property FactsDecisionCommentThe Second Division of the Federal Court of Appeals in Civil and Commercial Matters recently analysed whether a precautionary measure requested by the firm Giorgetti & Bruno SRL was appropriate in a case concerning the transfer of a sign.(1)FactsThe plaintiff based its argument on an alleged transfer of ownership of a mixed sign comprising the words "Los Totora" and a star. The plaintiff alleged that the transfer had been carried out fraudulently (due to an imbalance of powers) and at an excessively high price by its managing partner. For this reason, the firm requested the Court to prevent the defendant from:using the sign; andmaking contracts in relation to the sign (ie, to advertise, sell or license it).DecisionTo establish whether the plaintiff had met the conditions necessary for precautionary measures to be ordered, the Court considered article 50 of the Agreement on Trade-Related Aspects of Intellectual Property. This provision enables judges to adopt prompt and effective interim measures, designed to prevent the infringement of any IP right and preserve relevant evidence. Such measures can be taken without hearing the other party.The Court held that there was no evidence that the transfer had been carried out fraudulently. It had not been proved that the managing partner did not have the powers to make the assignment.The Court also stated that any risks resulting from the delay were hypothetical. It did not seem likely that the defendant would create a new musical ensemble using the sign, thereby generating an irreparable burden for the plaintiff.Further, the Court rejected the plaintiff's claim that the sign should be considered a "de facto" trademark. The Court held that the sign did not meet the requirements of having been used in public for a continuous and interrupted period.CommentThe Court highlighted that this case was not a typical trademark comparison conflict. Instead, it was a complex problem of a corporate nature that dealt with the possible excess of powers of the assigner. The decision confirms that judges have a duty to decide on the merits of the matter – whether corporate or trademark – by means of a final ruling.Each of the arguments made, not only in trademark matters, must be sufficiently evidenced when requesting precautionary measure. Argentinian legislation establishes that 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.Further, in this case, the plaintiff's allegation that the sign in question was a "de facto" trademark entailed a need to document that the trademark had been in constant, continuous and uninterrupted use over time.Given that the plaintiff failed to meet the conditions that would justify the cessation of use of the trademark, and thus that the plaintiff failed to prove its claim, the Court rightly decided to reject the requested precautionary measure.For further information on this topic please contact Josefina Piñeiro at Ojam Bullrich Flanzbaum by telephone (+54 11 4549-4900) or email ([email protected]). The Ojam Bullrich Flanzbaum website can be accessed at www.ojambf.com.Endnotes(1) Giorgetti & Bruno SRL c/ Bruno, Julián Javier s/precautionary measures, Second Division of the Federal Court of Appeals in Civil and Commercial Matters, 5 May 2022.