On March 14, 2013, Division I of the Federal Court of Appeals overturned the court of first instance’s rejection of a precautionary measure based on Section 38 of the Argentine Trademark Law, which had been applied for by the owner of an unregistered mark. The decision was delivered in the case “Grupo Almar S.R.L. v. Grupo Alimentario Carbiz S.R.L. – Precautionary Measure”.

Grupo Almar applied for a precautionary measure pursuant to Section 38 of the Trademark Law, which provides that the owner of a registered trademark who becomes aware of the existence of products bearing an infringed trademark may request the court: (a) the attachment of the products; (b) the drawing up of an inventory and description thereof; and © the seizure of one sample of the infringing products. However, the mark “PUDDINGS” (and device) owned by Grupo Almar that was allegedly infringed on by Grupo Alimentario Carbiz was not a registered but a so-called de facto trademark.  

The judge of first instance rejected Grupo Almar’s request since it considered that the relief provided for in Section 38 of the Trademark Law was only available to the owner of a registered trademark. The judge added that unregistered marks are not protected by the provision of said Section 38, particularly when seeking the attachment of the alleged infringing products. In view of the decision, the plaintiff excluded the attachment of the products from the scope of the precautionary measure and filed a petition for reconsideration with an ancillary appeal. The first instance’s judge rejected the petition for reconsideration arguing that the exclusion of the attachment of the products was not enough since the infringement takes place only in respect of registered trademarks and granted the appeal.  

Division I of the Federal Court of Appeals reversed the decision of the court of first instance and granted the precautionary measure requested by Grupo Almar based on Section 38 of the Trademark Law, with the exception of the attachment of the products in view of the exclusion made by the plaintiff with the lower court.  

The appellate court held that de facto trademarks or unregistered marks deserve legal protection in exceptional cases, especially when those marks have been intensely used and have created goodwill, and cited previous decisions from other Divisions of the Federal Court of Appeals. Otherwise, the court added, the owner of such a mark would be unprotected against a third party seeking to take advantage of its prestige and effort.  

This ruling is in line with earlier decisions of the Federal Court of Appeals and the opinion of legal commentators, who hold that in specific cases unregistered marks may deserve exceptional protection. However, this should not be taken as a rule. In Argentina, the ownership of a trademark and the right to its exclusive use are obtained by registration with the Trademark Office. All remedies against trademark infringement are readily available to the owner of a registered trademark. Owners of unregistered trademarks may obtain legal protection in specific cases provided that certain conditions are met and that adequate proof is submitted to the judge.