Abril Neiman March 27 2023 What is the function of the Federal Civil and Commercial Chamber in the new trademark opposition resolution process? Ojam Bullrich Flanzbaum | Intellectual Property - Argentina Abril Neiman Intellectual Property IntroductionFactsDecisionCommentIntroductionIn July 2022, Chamber No. III of the Federal Civil and Commercial Court ruled on the merits in a case between Westrock Shared Services LLC and West Pharmaceutical Services Inc. It carried out a final comparison of the two entities' trademarks, exercising its power to review the administrative decision.As well as deciding on the administrative resolution made by the Argentinean Trademark Office, the Court had to issue several interlocutory rulings on the parties' requests to:reject the demand in limine; andopen the appeal to an evidentiary stage.FactsIn 2015, the plaintiff applied to the Trademark Office to register the trademark (and design) WESTROCK in class 20. The defendant filed an opposition to the application, based on its prior trademark (and design) WEST and its trademark WESTAR, both registered in class 20. Resolution 183/2018 regulates the administrative process for resolving oppositions.In the administrative instance, the opponent made use of every opportunity at its disposal during the opposition procedure to achieve a favourable decision, such that the Trademark Office would declare the opposition to be well founded. After the three-month deadline to negotiate, when the opponent was notified to ratify its claim, it:paid the official fee and ratified the opposition;filed a broadening arguments brief;filed proof; andpresented its final arguments.On the contrary, the applicant chose to keep silent, passing up every opportunity to defend itself during the administrative procedure.In January 2021, the Trademark Office carried out its final analysis of the trademarks and declared the opposition to be well founded. With this decision, the trademark application was rejected.The applicant – and now the plaintiff – filed an appeal with the Court. In its brief, WestRock provided documentary, informative and forensic reports as evidence. When the opponent – now the defendant – was notified of this appeal, it asked the Court to reject the claim in limine and dismiss the evidence. It asked for the legal costs to be borne by the plaintiff.DecisionIn limine rejection of claimFirst, the Court had to analyse whether the appeal complied with the formal requirements. However, the claimant met every admission requirement under article 17 of Law 22,362 which provides the possibility to appeal an administrative decision issued by the Trademark Office with the Court.Second, the Court decided to address the defendant's argument about "keeping silent". In the process of registering a trademark, the applicant's interest is established by the fact that it wants to:acquire rights over the trademark;be the owner; anduse it.Therefore, an applicant's lack of a response towards an opposition can never be interpreted to constitute a lack of interest , and neither can this be declared in default of appearance. The new opposition resolution regulation in the administrative instance does not establish that the applicant has an obligation to appear in the process. On the contrary, the opponent has the obligation to maintain the opposition. Otherwise, the opposition is understood only as an informal objection.For this reason, the Court decided that an applicant's lack of response to an opposition cannot be a reason for the inadmissibility of the trademark. If this were the case, it would constitute a denial of the right to exercise an action. This is directly linked to the constitutional right to petition.(1)Opening appeal to evidentiary stageThe Court cited Law 27,444 on the Simplification and Reduction of Bureaucracy. Based on this law, the Trademark Office issued Resolution 183/2018, which modified the trademark resolution system.Articles 2 and 4 of this resolution states the instances and deadlines to offer evidence. Each party has 15 days from when they are served notice to offer evidence, together with their opposition brief or opposition response. Thereafter, they both have 40 days to produce evidence.Taking this into account, the Court affirmed that the appellant's situation should be assimilated to that of any party in a civil proceeding, in which evidence cannot be produced in the second instance. The procedure for the resolution of oppositions in the administrative venue is understood as the first instance, at which time the appellant should have made use of its right.WestRock deprived itself of offering evidence by not answering the opposition when it was specifically authorised to do so. It was then precluded from offering evidence.The Court decided to reject the plaintiff's request to open the appeal to an evidentiary stage.Judgment on the meritsThis case involved one of the first appeals against a decision of the Trademark Office since the new procedure for the resolution of oppositions in an administrative venue was adopted through Resolution 183/2018.In relation to the appealed decision, the Trademark Office declared the opposition to be well founded on the grounds that there were sufficient similarities in the three levels of the trademark comparison to allow their coexistence.In view of this statement, the appellant argued that there were sufficient differences in the comparison levels. Further, the Trademark Office had failed to consider other circumstances of the case that further reduced the possibility of generating confusion for the consumer. This was the interest that had to be protected and in view of which such disputes are resolved.The Court proceeded to conduct its own analysis on the merits of the case, considering:the commercial coexistence of both trademarks in the local and foreign market;the different products they distinguish; andthe differentiating elements between the trademarks.The Court carried out a trademark comparison. It reached several conclusions that did not match the Trademark Office's resolution. Emphasising the graphic and conceptual aspects of the marks, it concluded that there were differences that prevented the possibility of confusion for the consumer, since the marks had dissimilar designs and typographies. Even if they shared the word "west" – which was a general term in the class – the concept of "rock" alludes to a cultural movement that prevents the possibility of a link between the marks.The Court set out all the circumstances that led it to make its final decision. These included the facts that:the trademark application corresponded with the applicant's company name. Due to its trajectory and presence within the international market as a registered trademark, it deserved protection;the products that the two companies manufactured were intended for specialised audiences. The plaintiff marketed packaging products as part of the packaging process for household, beauty, beverage, tobacco and luxury products, while the opposing party, though involved in the packaging process as well, was involved with the biological and pharmacological research industry; andthe trademarks had been peacefully coexisting in 42 countries for more than five years, which weakened the opponent's position of confusion in the market.The Court determined that it must always put itself in the shoes of the public consumer. The consumers in this case were specialised and, therefore, would study the products it intended to acquire beforehand.The Court thus decided to overrule the Trademark Office's decision and admit the appeal.CommentThis case was one of the first rulings to decide on an appeal against the decision of an opposition in the administrative venue and reach a totally opposite conclusion. The opposition had no grounds and the losing party was ordered to pay the costs of the appeal.The case exemplifies how the Court can review the Trademark Office's decisions. Although evidence cannot be added as part of this review process, the parties can add grounds to support their position in the case.For further information on this topic please contact Abril Neiman 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) Articles 14 and 18 of the National Constitution.