On December 27, 2013 Division 1 of the National Court of Appeals in Federal Civil and Commercial Matters affirmed the decision of the judge of first instance which had cancelled the registrations of the trademark “CCIAC CAPACITACIÓN Y CULTURA PARA EL INGRESO AL CONOCIMIENTO” (word mark and device mark) in Class 41, enjoined defendant from using said marks, and ordered him to pay damages, all of which had been requested by the plaintiff on the basis of the trademark “IAC INSTITUTO ARGENTINO DE COMPUTACIÓN” (and several others with the word IAC, all in Class 41). The court also increased three-and-half times the damages awarded to the plaintiff and ordered that the decision be published at defendant’s expense. (“Levencoll S.A. v. Iglesias, Roberto Ricardo”, case No. 10,517/06).
As grounds for finding that the marks were confusingly similar, the court held that notwithstanding the general principle according to which they had to be compared as a whole, an exception could be made when there was a deliberate attempt from the defendant to get closer to the plaintiff’s mark to win over consumers. On the basis of this argument the court compared the words IAC and CCIACC and found them to be confusingly similar. To this end the court not only took into account their similarity, but also the fact that both were used in connection with educational training and defendant had a franchise of plaintiff’s mark.
The court moreover held that the decision of first instance had been right in enjoining defendant from using his marks, inasmuch as this was the logical consequence of the preliminary injunction granted separately and of the cancellation of the registrations.
Turning to the damages awarded by the district court, the appellate court held that they should be increased significantly in view of the defendant’s behavior in infringing the plaintiff’s registration and failing to comply with the preliminary injunction that had barred him from using trademark “CIACC”.
Lastly, the court granted plaintiff’s request that the court ruling be published.
This decision highlights the severity of the Argentine courts regarding the defense of registered trademarks that are currently used.