On October 24, 2013, Division 1 of the Federal Court of Appeals in Civil and Commercial Matters amended the decision of the First Instance Court and ordered the defendant to withdraw from its Web page www.mercadolibre.com.ar the advertisements of products with the trademark “TEVE COMPRAS” (and design) which had been identified by the plaintiff (“Teve Compras 2001 S.R.L. v. Mercado Libre S.A.”).
Teve Compras had requested a precautionary measure seeking to enjoin Mercado Libre from using plaintiff’s trademark “TEVE COMPRAS” (and design). The First Instance Court admitted the complaint on the strength of the plaintiff’s trademark registrations, the documentary evidence submitted, and on the basis of the provisions of sections 50 of the TRIPs Agreement and 232 of the Argentine Code of Civil Procedure.
The Court of Appeals amended the trial court’s decision and accepted the defendant’s arguments in the sense that it was impossible to control in advance possible infringements of third parties’ rights. It also held that Mercado Libre had the means to prevent the posting of specific content when so requested by the trademark owner or by a Court order. The Court also took into account the expert witness’ report, issued by a specialist in computer science, to the effect that, although Mercado Libre could block from its own sites certain links hosted in other sites, this was not an easy task given the huge amount of information published and the ever-changing nature of the media. Therefore, to enable a reasonable compliance of the precautionary measure and to avoid unnecessary hardship on the defendant, while protecting the plaintiff’s rights, Mercado Libre was ordered to withdraw from its page www.mercadolibre.com.ar the advertisements of products with the trademark “TEVE COMPRAS” (and design) indicated by the Teve Compras. The court did not amend the pledge bond set by the First Instance Court and decided that each part would bear its own litigation.
The decision follows the criteria of earlier case law and at the same time opts for a reasonable compliance order to an Internet Service Provider rather than a generic one enjoining the use of a trademark.