On November 6, 2012, Division 2 of the Federal Court of Appeals in Civil and Commercial Matters of the city of Buenos Aires confirmed the First Instance Court’s decision and enjoined defendant’s use of the trademarks “OAKLEY” (word), “OAKLEY” (and device) and “O” (and device), in Class 9, and ordered the payment of Argentine Pesos 200,000 as damages (with interests), the publication of the decision in the local newspapers “Clarín” and “La Nación”, and imposed the costs of the proceedings on the defeated defendants in the case “Oakley Inc. v. Planet Optical S.R.L. and another”.
In the preliminary injunction the Court’s officer had made an inventory of 133 eyeglasses bearing the logo and trademark “OAKLEY”, all new, unworn and ready for sale.
When comparing the trademarks involved, the Court pointed out that “one must be quite careful to realize that [the trademark] in question is ‘OKEY’ since the letter ‘K’ is joined to the letter ‘O’ and (…) the letter ‘E’ is split, on one side, in an ‘L’ and, on the other, in two smaller bars similar to the sign ‘=’ (…)”. The court added that “that way of presenting trademark ‘OKEY’ tallies with the plaintiff’s signs”.
The Court also recalled that “in this type of conflicts, when the infringer uses different portions of third party’s trademarks causing consumers to automatically associate such trademarks with the infringer’s, consideration must be given to the use of the various elements as a whole.” The Court went on to say that the purpose of the lawmaker is to prevent that someone who is not the owner of the trademark makes a profit by using it without the owner’s authorization. The Court also highlighted that this can happen when a trademark is copied as a whole or when the essential elements of a trademark are copied, causing consumers to make an association with the genuine mark.
This decision warns imitators that the illegitimate use of third parties’ trademarks will be sanctioned. This will apply to those who copy third parties’ trademarks as a whole and also to those who use tricks to get closer to them, causing consumers to associate counterfeit and registered trademarks and thus gain illegitimate profits.