The Federal Court of Appeals decided that the “acción de reivindicación” (action to seek the transfer of a trademark) is available only against “unfaithful agents or representatives” (Paris Convention art. 6 septies), whereas the trademark cancellation action is the specific remedy available to deal with (unrelated) pirates.
The Federal Court of Appeals in Civil and Commercial matters, Second Division, in its decision of February 5, 2014 in Case No. 4725/2009 “Jugadores Anónimos Asociación Civil v. Lubertino, Mónica Alicia” resolved that the action mentioned in section 11 of Trademark Law 22.362 to seek the transfer (“reivindicación”) of a trademark is only available in those cases concerning the so called “unfaithful agent or representative” referred to in art.6 septies of the Paris Convention, but is not available to those who have suffered an act of piracy from an unrelated third party. In those cases, the specific remedy is the cancellation action provided by art. 24 b) of Law 22.362 which declares null and void “trademarks which were registered by those who, when applying for registration, knew or should have known that they belonged to a third party”.
On the basis of such interpretation, which is in line with the solution adopted in similar cases by almost every other country, the Federal Court of Appeals rejected plaintiff’s “acción de reivindicación” seeking the transfer of defendant’s registrations for the trademark “JUGADORES ANONIMOS” and, in turn, admitted the alternate action brought by plaintiff seeking their cancellation for having been registered in bad faith and in violation of the provisions of articles 24 b) of Law 22.362 and 953 of the Civil Code.
Finally, the decision also dismissed the opposition filed by the defendant against plaintiff´s application for the trademark “JUGADORES ANONIMOS” which was based on the cancelled registrations for the same trademark.