On October 4, 2016, Division 1 of the Federal Court of Appeals for Civil and Commercial Matters upheld a decision of the lower court and rejected the application for registration of trademark “CABAÑA SUIZA” in International Class 29 (“Iannicello, Marcelo Augusto v. Embajada de Suiza en la República Argentina”, Case No. 9570/2008).

The plaintiff had applied for the registration of the mark "CABAÑA SUIZA" (Spanish for “Swiss Cabin”) in International Class 29, whose application was opposed by the Embassy of Switzerland on the basis of the prohibitions of Section 3, subsections (d) and (g), of the Argentine Trademark Law, which bar the registration of misleading trademarks as well as of trademarks made up of emblems used, among others, by foreign nations.[1] The opponent had objected that the plaintiff sought to register the official name of their country, which was not registrable and which would lead consumers to automatically associate the name of the country with products of Swiss quality or coming from Swiss companies or communities.

The plaintiff offered to limit his application to “cold meats, cold cuts, cured meats and meat products in general”, in Class 29. In the absence of an agreement, Iannicello initiated a court action to have the opposition removed.

Iannicello argued that geographical names can be registered as trademarks as long as they are not appellations of origin and/or misleading terms, which was not the case here. The plaintiff insisted that "SUIZA" (“Swiss” or “Switzerland” in Spanish) evoked or referred to chocolates or watchmaking, but not to cold meats.

Moreover, according to the Fair Trade Practices Law, the products would carry the indication of "Argentine Industry" or "Argentine Production", dispelling any doubts consumers might have regarding the true origin of the products. The plaintiff also pointed out that the Argentine Trademark Office had granted the registration of trademarks "LA CASA DE FRANCIA" (“House of France”), "LA MAISON DE FRANCE", "MONACO", in International Classes 30 and 29 respectively, as well as the trademarks "GRANJA SUIZA" (“Swiss Farm”), “SODA LA SUIZA" (“Swiss Soda”), “1894 CHOCOLATERÍA FAMILIA SUIZA" (“1894 Swiss Family Chocolate Shop”), against which the Embassy of Switzerland had not filed opposition, thus contradicting the doctrine of estoppel (venire contra factum proprium non valet).

The defendant argued that the plaintiff had not proven his legitimate interest and that “SUIZA” is not only reminiscent of chocolate or watchmaking.  It also held that the names of foreign nations should be protected.  It rejected the argument on the use of the expression “Argentine Industry” and mentioned other legal prohibitions which also barred the plaintiff from using the name “SUIZA” on its products.  The Embassy also pointed out that the registration of  trademarks including names of other countries was not relevant and refused to acknowledge the existence of other trademarks including the word “SUIZA”.  It also mentioned other oppositions filed by the Embassy, to rebut the doctrine of estoppel.

Furthermore, the defendant pointed out that in 2006 the Argentine National Institute of Viticulture (INV, after its name in Spanish) had objected the application for the registration of the mark “TIERRA ARGENTINA” (Spanish for “Argentine Earth”), applied for in Canada by an importer. The use of that trademark not only hurt the interests of the national wine sector, but also contravened international laws and treaties.  Therefore, if the Argentine State could block abroad trademark applications with the name “Argentine”, likewise the defense of other countries could not be ignored here.

The judge of first instance rejected the complaint. The plaintiff appealed, complaining that the judge had not considered that plaintiff had proved its legitimate interest.

The Court of Appeals upheld the decision.  To that end, it analyzed what is meant under “legitimate interest” and stated that, according to the Argentine Trademark Law, it was not necessary to be a merchant to own a trademark registration, but rather to have a legitimate interest to pursue the protection, both by individuals and non-profit associations.

Moreover, it held that the legitimate interest set forth in Section 4 of the Argentine Trademark Law had to be interpreted broadly, and accordingly legitimate interest would be acknowledged when the applicant proves, among other things, the profits obtained with the registration of the mark, which are reflected in its commercial activity.

The plaintiff's allegations merely stated a legitimate interest in obtaining the registration of the mark since there are many trademark registrations that include the name of  foreign countries. Leaving these aside,  the ad quem held that, any attempt to register a trademark whose principal element is a place of origin, that is the name of a country and/or region and/or geographical area which designates a product originating from that area and  the characteristics of which are due exclusively or essentially to the geographical origin, cannot be ignored.

The Court of Appeals therefore held that a geographical name cannot be registered as a trademark if there is a necessary link between the product, its geographical name, and the name proposed as a trade mark.

Section 3 (d) of the Argentine Trademark Law aims to prevent the registration of trademarks which are misleading for consumers, who may assume that the products involved have an endorsement which they do not really possess. This would be in line with the principles of Trademark Law, which are the protection of consumer interests and rights and fair trading practices.

As regards the prohibition set forth in Section 3 (g) of the Trademark Law, the Court of Appeals considered that the names of foreign nations are not registrable as trademarks, unless they are applied for by the States themselves or their authorized entities. In consequence, the Court rejected the arguments of the plaintiff, who had failed to prove his legitimate interest, which failed before the defendant’s rights, protected by international treaties and local provisions which mandate the Argentine State to respect the names of foreign countries.

Lastly, although the mark applied for included two terms, the Court of Appeals determined that the mot vedette or key word in this case was "SUIZA”.

To sum up, as the plaintiff did not provide valid reasons to justify his application for registration, the Court of Appeals considered that "CABAÑA SUIZA" contradicted the spirit of the mentioned legal principles, depriving the plaintiff of any legitimate interest, and confirmed the lower court’s decision.