On September 25, 2012 in the case "Montes, Francisco Baltazar v. Montes S.A.” Division 3 of the National Court of Appeals on Civil and Commercial Federal Matters made some very fine distinctions to rule that in some cases the marks involved could not coexist, while in other cases they could, even though in all cases they shared the same word (“montes”) and belonged to the same class (33). Specifically, the Court held that the trademarks "MONTES" and "MONTES SELECCIÓN” were confusingly similar with the trademarks "MONTES ALPHA" and "MONTES 2000", all in class 33, while “FRANCISCO MONTES", also in class 33, could coexist with the aforementioned trademarks "MONTES ALPHA" and "MONTES 2000".
The sole abstract similarity between the signs involved (the voice "montes" was included in all the trademarks at stake, and is part of the plaintiff´s name as well as of defendant’s) was held insufficient to bar their coexistence. Instead, what was really important to determine the likelihood of confusion between the signs is the factual possibility that confusion in the consuming public might be provoked.
Thus, taking into account the adjective circumstances of the case, the Court decided that the opposition of the defendant was justified, since both parties work on the processing and commercialization of alcoholic beverages in their own wineries and the trademarks are used to distinguish varieties of wines to be sold in the same market and public, "MONTES" and "MONTES SELECCIÓN" could not coexist with "MONTES ALPHA” and "MONTES 2000", in Class 33.
On the other hand, to decide that the trademark "FRANCISCO MONTES" was registrable and partially admit the complaint, the Court here argued that the bar against against registration could not reach trademarks that consist of the name of the applicant.