On December 27, 2016, Division 3 of the Federal Court of Appeals in Civil and Commercial Matters, in the case “Zito, Graciela Haydee v. Zito Francisco” (case No. 6526/08) affirmed the judgment of first instance ordering the defendant Francisco Zito not to use the trademarks “ZITO” or “GRACIELA ZITO”, or anything that contained the surname “Zito”, in connection with garments.  The court also declared that said judgment was final, insofar as it accepted the defense of the statute of limitations with regard to defendant’s use of “Francisco Zito” as a trade name.

The plaintiff, Graciela Zito, has been a well-known dressmaker since 1985. She owned the trademarks “ZITO” and “GRACIELA ZITO”, and she had sued to enjoin the use of “Francisco Zito” as a trade name as well as the use of the trademarks “ZITO” and “GRACIELA ZITO” and any other confusingly similar trademark.

The judge of first instance admitted the claim, ordering the defendant not to use “ZITO” or “GRACIELA ZITO” or any other trademark that contained the surname “Zito” to identify garments. Simultaneously, the judge admitted the defense of the statute of limitations submitted by defendant alleging he had been using the word “Zito” since 1997, far longer than the one-year term established in Section 29 of the Argentine Trademark Law, for which reason the action had lapsed.

Accordingly, the judge rejected the claim directed against the use of the trade name, and ordered the publication of the decision with costs to the defendant, rejected the request for destruction of the trademarks and of the infringing products, and finally ordered the plaintiff to pay 40% of the court costs and the remainder by the defendant.

Finally, the judge of first instance held that since both parties were competing in the same market, the defendant could not continue using his name as a de facto mark since the main part of the disputed signs was the surname “Zito” and the names “Graciela” and “Francisco” were not sufficiently distinctive.

The decision was appealed by both parties, but the plaintiff later withdrew her appeal, so that the decision regarding the use of “Francisco Zito” as a trade name became final, and the only remaining issue was the dispute regarding the trademarks.

The judges of Division 3 held that the matter had to be resolved realistically and that there was indeed some similarity because the main part of the marks involved was the surname “Zito”, which had great distinctive power, while the name “Francisco” was insufficient to overcome the similarity of the remaining elements. Although trademarks should be confronted in their entirety since it was a question of prohibiting the coexistence of confusingly similar denominations, in certain instances it was appropriate to focus on some of the elements, and the case law had held that the first name was less important than the surname, which is “the one that impresses as the main part of the trademark”.

The judges also held that the ruling issued in "Paloma Herrera v. Carolina Herrera S.A.” was not applicable here since in that precedent both marks were well-known, unlike in this case.

Thus, the Court of Appeals refrained from mechanically applying the general principles of trademark comparison, whereby the signs at stake are compared in their entirety, and decided instead to give more weight to the main elements to assess their distinctive effect.