On April 10, 2012, in “Schwinn Acquisition LLC v. Nistico Juan Carlos” Division 2 of the Federal Court of Appeals recognized generically the existence of the right to reclaim a trademark registration, but did not grant it in the specific case at stake because the plaintiff had not met the required conditions.
Ms. Luciana Gogolin had obtained a registration for the mark “WRGE” in class 25 but later used it differently from the way it was registered, namely “Wrge” (W in upper-case, the rest in lower-case), in blue and yellow, as used in trademark Wrangler.
The defendant changed her use of the mark to “WRGE” and replaced the yellow and blue color combination with red and grey. Although the registration does not specify any particular color, the defendant had herself accepted that it was in bad faith to use the yellow and blue colors, and therefore admitted that she was not allowed to use them again in the future.
In connection with the cancellation request, the Court held that although the mark “WRGE” was entirely included in the plaintiff’s mark, which is a well-known mark in Argentina, when filing the bill of complaint the plaintiff had argued that it had not opposed the application because it could be considered that there was no likelihood of confusion (estoppel). What indeed caused confusion was the illegal way in which the defendant used the mark, but such use had ceased and in consequence the Court awarded damages for roughly U.S. $ 7,800, which amount resulted from the defendant’s sales in the relevant time frame, assigning these illegal profits to the plaintiff.