On November 6, 2012 Division 3 of the Federal Court of Appeals in Civil and Commercial Matters of the city of Buenos Aires rejected the First Instance Court’s decision and cancelled defendant’s trademark “DOCTUS” (class 5), declared groundless the opposition against the application for trademark “DOCTHOS” and device (Class 5), and declared moot the cancellation action due to non-use filed by the plaintiff, in the case “Swiss Medical S.A. v. Laboratorio Omicron S.A.”.

The plaintiff filed a complaint requesting: (i) the non-use cancellation of defendant’s trademark registration “DOCTUS” in Class 5; (ii) the cancellation of said registration arguing that renewal had been made on the basis of a false declaration of usea; and (iii) the dismissal of the opposition against plaintiff’s trademark application for “DOCTHOS” (and device) in the same class. The opposition had been based on defendant’s trademark “DOCTUS” in Class 5. The First instance Court decision dismissed the invalidation request based on the false declaration of use but admitted the cancellation due to non-use of the opposing trademark “DOCTUS”, and consequently declared that it was unnecessary to decide on the dismissal of the opposition.. The Court of Appeals reversed that decision.

The Courts analysis focused on the validity of the renewal of the trademark “DOCTUS” by its former owner, Laboratorios Medex S.A. (predecessor of Monroe Americana S.A., cited as a third party in the lawsuit), made before the mark was assigned to defendant, Laboratorio Omicron S.A.

The Court pointed out that Omicron had failed to provide any explanation regarding the lack of use of the trademark by its predecessor, although it could have given information inasmuch as someone who creates a pharmaceutical company, acquiring intangible rights from a third party, knows its impact on the market.

The Court also added that Monroe Americana S.A. (assignor to defendant Omicron) rejected the cancellation action invoking the request for authorization from ANMAT (National Administration of Food and Drugs) made by its predecessor Medex to sell and manufacture a product called “DOCTUS”. Monroe argued that said request was a “preparatory act” and that the authorization granted constituted a case of force majeure which justified the lack of use. The Court explained that the “preparatory act” had to be supported by the subsequent commercial use, and stressed that none of those requirements had been complied with, as ANMAT informed that the authorization had been granted in 1972 and there was no evidence that “DOCTUS” had ever been commercially used. The Court therefore concluded that the declaration made to renew the trademark had been untruthful.

In addition, the Court held that the cancellation affected defendant. Laboratorio Omicron S.A., since nobody can acquire a better or more extensive right that that owned by its predecessor. This led to the dismissal of defendant’s opposition against plaintiff’s application for “DOCTHOS” in Class 5, as defendant lacked legitimate interest. The court also declared moot the cancellation for non-use requested by the plaintiff.

This decision highlights the importance of making the necessary inquiries when acquiring a trademark registration to confirm that it complies with the use requirements under Argentine Trademark Law.