On April 9, 2013 Division 3 of the National Court of Appeals on Federal Civil and Commercial Matters of the city of Buenos Aires issued a verdict in the case “Del Olmo, Marcelo Eduardo v. Pastas Frescas San Genaro S.R.L.” declaring that trademark application “SAN GENARO” (and device), filed in International Class 30, was confusingly similar to opposing trademark “SAN GENARO”, used by the opponent-defendant since 1979 in connection with “pasta”.
Here both parties –applicant (plaintiff) and opponent (defendant)– had been using the same mark in connection with the same goods, which posed a slightly different situation from the usual case which pits an opponent which claims a prior trademark use against a junior trademark applicant.
Affirming the decision of the district court, which had ruled that the marks involved were confusingly similar, the Court of Appeals argued as follows. First, it had been proved that opposing trademark “SAN GENARO” was a de facto trademark publicly used by the defendant since 1979, without any conflict or interruption, in the province of San Juan and in connection with “pasta”, having thereby acquired a clientele. On the other hand, plaintiff-applicant also used trademark “SAN GENARO” on the same goods, but had done so later, since 1993, in the neighboring province of Mendoza.
The Court pointed out that trademark use deserves legal protection, at least on the basis of general legal principles and in certain cases on the grounds of section 953 of the Civil Code (a broad provision that rules generically that juridical acts carried out in bad faith are invalid). On that basis, it is possible to oppose a trademark application which might cause confusion as to the source of the products, thereby affecting the particular interest of the owner and the general interest of consumers. The registration system adopted by the Argentine trademark law should not be applied mechanically, depriving unregistered trademarks from the protection arising from said general legal principles, either to protect the clientele or to disallow unfair trade practices.
The Court therefore concluded that the opposition filed by the owner of the de facto trademark was reasonable, inasmuch as the marks involved were identical and intended to cover the same products.
It also seems that the Court factored in that the applicant had used in bad faith the mark it now sought to register. In this regard, the Court held: “Specifically, according to the documents submitted by the party in question, on August 26, 1993 the city of Mendoza authorized that party to prepare pasta, pizza and meat pies [in a location] very close to the place where a subsidiary [of the opponent firm] operated years ago.”