Belen Sorrentino Sol Baudino December 12 2022 Importance of expressing grievances in trademark proceedings Ojam Bullrich Flanzbaum | Intellectual Property - Argentina Belen Sorrentino, Sol Baudino Intellectual Property First-instance courtFederal Civil and Commercial CourtCommentOn 16 June 2022, the Federal Civil and Commercial Court upheld a decision of the lower court to reject a claim filed by Diego Ezequiel Méndez, who sought the revocation of a resolution of the National Institute of Industrial Property (INPI). The resolution had refused an application for the trademark LA LUISITA in class 30 of the international nomenclator.(1) When reaching its decision, the Court emphasised the grievances brought by the plaintiff.First-instance courtThe judge pointed out that the trademark office had decided to deny the trademark application based on a technical report, which established that the intended sign was covered by the provisions of article 3b of the Trademark Law (No. 22,362), due to the precedent of the trademark LUISITO, granted in the same class.The judge held that the signs involved were similar, as the terms "luisito" and "luisita" were spelt the same, except for the last letter, and the root, "luis", would be easy for the consumer to remember.Even though the trademark LUISITO was presented inside an oval and the trademark LA LUISITA was presented inside a square, and even though one was the feminine form of the word and the other the masculine, the judge saw no significant difference between them. In addition, he argued that their colours were not sufficiently characteristic to affirm that they were undoubtedly different trademarks.Regarding the doctrine of estoppel, the fact that the INPI had granted trademark registration to other applications that included the term "luis" did not compel the administrative entity to maintain its criterion if, after a relevant analysis, it considered that there was a degree of confusing similarity between the trademarks. The judge remarked that, in this case, the doctrine did not have the scope it has in other fields of law, and, therefore, the conduct of the INPI could not be a reason to legitimise the concurrence of confusingly similar trademarks affecting the protection of the interests of the consumer public.Federal Civil and Commercial CourtThe plaintiff appealed the first-instance judgment, and in his expression of grievances stated that the judgment had failed to consider that the trademarks shared a "commonly used term" in class 30, which could not be monopolised by anyone. In his writ of appeal, the plaintiff claimed that the judge had been wrong in stating that both trademarks shared the same root when, in fact, his trademark had the term "la" as a root and the one cited as a precedent had the term "luis". Although the ultimate purpose of trademark law is the protection of the consumer, it was necessary to analyse and assess the evidence that proved that both trademarks had coexisted in the market for a very long time and in a peaceful way. Finally, the plaintiff questioned the costs awarded to the respondent, since he legitimately thought that he had applied for the registration of his trademark and then defended it in court in a timely manner.In response to the arguments expressed by the plaintiff, the Court decided that the appeal should be declared void under the terms of article 265 of the Civil and Commercial Procedural Code (CPCCN). The Court's reasoning is set out below.Expression of grievancesThe plaintiff did not meet the substantiation requirements foreseen in article 265 of the CPCCN. To justify this decision, the Court highlighted that the plaintiff had insisted on raising issues that had already been resolved by the first-instance judge, without expressing any element that effectively questioned the decision.Commonly used termsIn his writ of appeal, the plaintiff pointed out that both trademarks shared a term of common use and that it had been registered at least in 15 trademarks, but he did not refute any of the arguments made by the lower court in that regard. The fact that it was a term of common use in the class did not imply that any trademark application which includes it must be admitted.Doctrine of estoppelRegarding the doctrine of estoppel, the Court made the same assessment as the judge of first instance: in trademark matters, the doctrine did not have the scope it has in other fields of law. Therefore, decisions adopted with respect to other registration requests did not prevent the administrative entity from changing its criteria if, after a new analysis, it considered that there was a sufficient degree of confusing similarity to deny the request.Confusing similarity between trademarksThe Chamber agreed with the 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 plaintiff in his expression of grievances.Root of trademarksThe first-instance judge decided that both trademarks shared the root "luis", and once again, this had not been duly countered by the plaintiff.CommentIn this decision, the Court proved how important is to argue in an accurate way the expression of grievances in order for the appeal to be duly grounded. It is crucial that the appellant provides new grounds to those already mentioned in the first instance, as this will allow the judges of the second instance to reassess the damages that the previous decision had assigned. A legal exposition that contains a reasoned and critical analysis should be able to demonstrate that the first-instance decision was mistaken, unfair or unlawful.For further information on this topic please contact Belen Sorrentino or Sol Baudino at Ojam Bullrich Flanzbaum by telephone +54 11 4549 4900 or email ([email protected] or [email protected]). The Ojam Bullrich Flanzbaum website can be accessed at www.ojambf.com.Endnotes(1) Chamber III, Méndez, Diego Ezequiel v INPI s/Denegation of registration. Case No. 12.503/2018 of 16 June 22.