In a decision issued on May 10, 2012, Division 3 of the Federal Court of Appeals matters analysing trademark use in a court action involving a petition for cancellation for non-use in re “Sarfatis Pablo Hernan v Sardiye de Fallas Elisa”. By confirming the district court’s decision, the court of appeals rejected the complaint filed seeking the cancellation for non-use of the mark “TIME WASH” in class 37.

Among other petitions, the plaintiff had reclaimed multiple registrations and applications of the defendant’s trademarks, and, in subsidy, their cancellation for having been registered in bad faith. The Federal District Court rejected the claim but admitted the cancellation action.

The Federal Court of Appeals considered that the Argentine law recognizes the right to reclaim a trademark registration but that this was not applicable to this specific case as the plaintiff had not met the necessary conditions. The Federal Court of Appeals took into account that, at the time the trademark applications were filed by Mr. Nístico in Argentina, the plaintiff was not the owner of the same marks abroad, so the petition to reclaim these marks had insufficient grounds. The Court said that if the petition were granted, the plaintiff would obtain a dubious and inappropriate priority over the objected trademarks.

Nonetheless, the Federal Court of Appeals understood that the cancellation of certain trademarks should be admitted because not only had Schwinn proved to be the holder of the trademarks in several countries, but it had also proved that the defendant had registered other marks owned by the plaintiff abroad, which clearly constituted trademark piracy.