On December 27, 2012, in re “Asociación Argentina de Brangus v. Agro Industrias Inca S.A.” Division 3 of the Federal Court of Appeals decided that the marks “LA RAZA FUERTE” (“THE STRONG BREED”), applied for all products in class 16, was not confusingly similar to opposing trademark “LA RAZA” (“THE BREED”), which covers all products in class 29 excepting fruits and frozen vegetables.
Division 3 confirmed the trial court’s decision and expanded on it to refer to (a) the applicant’s legitimate interest, and (b) the principle of specialty.
As regards the first issue, the court held that the applicant’s legitimate interest had been sufficiently proved and once again referred to the broad criteria with which said interest should be assessed. In a brief but interesting comment, the court declared that the purpose of a trademark should be in accordance with the legal system and pointed out which hypotheses meet said purposes:
- Use to identify a product or service;
- Defense of a mark that is being used in the commercialization of a product or in the rendering of a service included in other classes; and
- Identification of an activity.
In practical terms, when courts decide conflicts involving marks registered for defensive purposes they tend to accept a closer proximity than they would if the case involved marks that are actually in use. The inclusion of “defensive marks” as a means to justify applicant’s legitimate interest gives additional value to this kind of protection available under Argentine law.
When analyzing the principle of specialty argument brought up by the parties, Division 3 confirmed that it is possible to oppose a mark covering products that are not protected by the opposing mark, and even when the marks involved belong to different classes (which, by the way, is a frequent practice in Argentina). The court also recalled that such a crossing of the boundaries of the marks’ scope may occur only when there are overlapping or proximate goods or services involved that may cause confusion as to their origin.
Quoting the trial court, Division 3 declared that the products in class 16 are “completely different” from those in class 29 and also considered that it would not be reasonable to conclude that these products are sold in the same stores. Based on these premises the court found no reason to refrain from applying the specialty principle.
As a result of the above arguments, Division 3 affirmed the trial court decision and declared that the marks “LA RAZA FUERTE” and “LA RAZA” are not confusingly similar as they identify products that belong to different classes.