On June 22, 2017 in re “Asociación Argentina de Farmacia y Bioquímica Industrial v. Sindicato Argentino de Farmacéuticos y Bioquímicos” (case No. 690/2017), Division 1 of the Federal Court of Appeals in Civil and Commercial Matters reversed the district court’s decision and dismissed the preliminary injunction sought by the plaintiff to enjoin use of the acronym “SAFYB”. The decision was based on grounds of non-urgency and on the fact that there was no risk regarding the effectiveness of the judgment.
The plaintiff had based the claim on the ownership of the trademarks “SAFYBI” and “EXPOFYBI” in classes 35, 41, 42 and 44, which they alleged to be confusingly similar to the acronym “SAFYB” used by the defendant.
The district court, after a sworn bond from the plaintiff, had granted the measure and ordered the defendant to refrain from using trademark “SAFYB” in all forms.
The defendant requested the district court to reverse its own decision and, subsidiarily, appealed it. As the district court upheld its ruling, the file was sent to the Court of Appeals.
On appeal, the defendant particularly claimed that the plaintiff had not proved that there was imminent danger in delaying granting of the preliminary injunction pursuant to the Code of Procedure. On this matter, the defendant claimed that, on the one hand, they had been using the acronym “SAFYB” for eleven years, and, on the other, it had been seven years since the plaintiff first requested them to stop using “SABYB” by a cease-and-desist letter which they had rejected.
In turn, the plaintiff stated that the defendant had acknowledged the unauthorized use of their trademarks at that time, and that from such reply they had inferred that the defendant would stop using it.
The Court of Appeals revoked the preliminary injunction, arguing that the critical issue to rule on was whether there was imminent danger in delaying granting of the injunction.
The ruling emphasized the fact that in October 2010 the plaintiff had requested the defendant to immediately stop using the name “SAFYB” by means of a cease-and-desist letter, and this fact was not contested. The defendant had rejected the claim and denied all the plaintiff’s statements. In particular, they had denied that the name “SAFYB” was used as a trademark and argued they would not use the acronym as such.
In view of the above, the Court of Appeals decided that there was no evidence that defendant had admitted having used the acronym contra legem nor to undertake that it would stop using it henceforth. Additionally, the plaintiff had not alleged any change in the circumstances since that time.
In conclusion, the Court of Appeals ruled that the risk in delay with respect to a scenario of which the plaintiff was aware at least since October 2010 could not be invoked.
In short, the decision by the Court of Appeals reaffirmed that to grant a preliminary measure there must be imminent danger (periculum in mora). Thus, the interested party has to push forward the claim after taking notice of the alleged unauthorized use. Otherwise, the preliminary measure must be dismissed unless a change with respect to the original circumstances is proved.