On October 30, 2012 in re: “Pañart Ignacio Esteban v. Radiomovil Dipsa S.A. CV”, Division 2 of the Federal Court of Appeals acknowledged the registrability of the trade mark “PHONERENTAL” (and device), as the Court did not consider it descriptive or suggestive of cell phone rental services.
The plaintiff, Ignacio Pañart, sued to overcome the opposition filed by the defendant on the grounds of Section 2, subsection b) and Section 3, subsection d) of the Trademark Law, which bar the registration of terms that constitute the necessary or usual designation of the product or service to be covered; that have passed into general use prior to the registration; or that could be misleading as to the nature, properties, merit, quality, or other characteristics of the goods or services covered by the trademark.
The first instance judge held that “PHONERENTAL” was not comprised by the aforesaid prohibitions, and allowed the registration, rejecting the objection raised by the defendant. On appeal, the defendant insisted that “PHONERENTAL” was the necessary and common designation of the service at stake, and that the registration of such name as a trademark would allow the plaintiff to monopolize a widely used term.
The Court of Appeals upheld nonetheless the first instance ruling, arguing that the designation “PHONERENTAL” was not necessary and usual or descriptive of the nature, function, qualities or other characteristics of the service. Moreover, Division 2 found that the expression was not in the “general use” before it was granted registration.
Therefore, the Court of Appeals established that there is “general use” when consumers refer to a service or product using a term in the belief that it constitutes the generic product name when, in fact, it is a trademark , and when such name is incorporated into the common language.