On September 12, 2013 Division 3 of the Federal Court of Appeals in Civil and Commercial Matters of the City of Buenos Aires rejected the lower court’s decision and declared groundless the oppositions filed against the applications for the trademarks “ROSA BLANCA” and “ROSA BLANCA DE ARGENTINA” in International Class 33 (“Velasco Baquedano Juan Ignacio v. Aqua S.R.L.”).

The plaintiff had instituted court proceedings seeking to remove the oppositions against the above applications, which oppositions were based on trademark “ROCA BLANCA” in International Class 32. The First Instance Court’s decision rejected the complaint disregarding the fact that the marks involved did not belong to the same class and holding that there was likelihood of confusion when there is overlapping or similarity between the products and services or when there may be confusion regarding the origin of the products or services involved; in this case the differences between the marks were deemed irrelevant.

The Court of Appeals revoked this decision, arguing that at first sight the marks in question were not identical and belonged to different classes, and held that these circumstances favoured the plaintiff. The Court went on to analyze whether the defendant had provided arguments and offered evidence supporting the alleged confusion, and concluded that it had not. It further pointed out that the defendant had not mentioned its activities, whether the opposing trademark was in use, and for what of the six products of class 32 it was used, all of which prevented the Court from learning the commercialization channels, the advertising and the shops where the defendant’s products were sold. Moreover, the defendant had failed to provide information from the Internet on its mark, and it was not possible to find any. The Court also mentioned that “ROCA” and “ROSA” had different meaning (“rock” and “rose”, respectively).

The Court stated that when a judge rejects legal principles or decides there is an exception to those principles, the facts and circumstances surrounding the case become more important. The lower court’s decision, which had disregarded the fact that the marks involved belonged to different classes, was based on a single precedent and took for granted that there was an actual danger of confusion. However, as there were no reasons to disregard the fact that the marks belonged to different classes, the defendant lacked legitimate interest to oppose the plaintiff’s applications, and therefore the lower court’s decision should be reversed. Legal costs of both instances were imposed on the defendant.

This decision stresses the importance of arguing and proving actual confusion when the marks at stake belong to different classes, in order to show that there are compelling reasons for disregarding the principle of “specialty”.