On December 17, 2012, in re: "Vía Bariloche S.R.L. v. Crucero del Norte", Division 3 of the National Court of Appeals on Civil and Commercial Federal Matters decided that trademark application "Crucero del Valle", filed by plaintiff Vía Bariloche S.R.L. in International Class 39, was confusingly similar to defendant’s Crucero del Norte S.R.L.’s opposing trademark "Crucero del Norte" in the same class 39 and in class 42.
To so decide, and thus reverse the decision of the lower court that had declared that the marks involved were not confusingly similar, the Court argued as follows: (a) the word "crucero" (“cruiser”) is not a common or generic term for land transportation services, which is the business of both companies, since consumers do not associate in an obvious and direct manner the word "crucero" with this mode of transportation; (b) even if "crucero" were common in class 39 for these services, the fact that it appears at the beginning of both trademarks does not contribute to make them distinguishable, as the first words are generally the most distinctive ones because they are the first to be remembered; and © the remaining portions of the marks involved were not significant, because "del Valle" (“valley”) and "del Norte" (“north”) denote origin, both being quite vague and imprecise geographical references.
Therefore the Court concluded that the marks involved were confusingly similar, despite the fact that the word "crucero" is quite common in class 39 –there are 22 registrations in said class with this word– because coexistence of “Crucero del Valle” and “Crucero del Norte” would nevertheless lead consumers into error.
What appears to have weighed with the Court was the fact that Vía Bariloche, which operates in the market of land transportation providing passenger services to and from the Valley of Rio Negro and which has applied for numerous trademarks with the word "Vía", has now sought to break into the market with the trademark "Crucero del Valle", while its competitor, Crucero del Norte, has been active in the same market for many years under the trademark "Crucero del Norte”. In this regard, the Court held that, "in addition, it should not be missed that, apart from protecting consumers from possible frauds, the law seeks to protect fair competition, which implicitly entails the right to protect goodwill from diversions resulting from the adoption of a confusingly similar trademark by a competitor".