Argentine company fails to register French PDO for spirits

Argentina
The Court of Appeals has upheld a decision of the Court of First Instance in which the latter had accepted an opposition against the registration of the trademark MARTINIQUE (Court Docket 266/05, August 12 2010, only recently released).
 
Peters Hermanos Compañía Comercial e Industrial SA was the owner of the trademark MARTINIQUE for goods in Class 33 of the Nice Classification (alcoholic beverages), which was renewed in 1986. When it expired in 1996, the mark was not renewed and lapsed. In February 2003 Peters applied for the registration of the same mark for the same goods.
 
The application was opposed by the Institut national de l'origine et de la qualité (INAO) on the grounds that ‘Martinique’ is a designation of origin that is officially protected in France by an executive order dated November 5 1996. Therefore, it is not registrable as a trademark under:
According to Peters, INAO’s argument that domestic or foreign designations of origin are not registrable was unfounded. The lower court rejected Peters’ claim, and the Court of Appeals affirmed.
 
In support of its application for the registration of MARTINIQUE, Peters argued as follows:
  • It had acquired rights in the trademark long before the TRIPS Agreement came into force in Argentina, and before France recognised ‘Martinique’ as a protected designation of origin (PDO).
  • The dispute should be resolved according to the provisions of Articles 24(4) and (5) of the TRIPS Agreement, under which the registration of a designation of origin as a trademark cannot be prevented where the rights in the designation have been acquired in good faith before the agreement came into force.
  • The trademark MARTINIQUE was in use even during the period when it was not registered. Therefore, it was valid as a de facto trademark.
The Court of Appeals dismissed Peters’ arguments. First, it held that, when the MARTINIQUE mark was registered, ‘Martinique’ was not a PDO. However, Peters forfeited its rights in the mark when it failed to renew it. Consequently, with regard to the new application, Peters’ rights had to be examined in accordance with the current legal and factual circumstances.
 
In this respect, the court took into account the provisions of Section 3 of the Trademark Law, which state that domestic and foreign designations of origin are not registrable (Paragraph (c)), in view of the fact that ‘Martinique’ had become a PDO. The court also referred to Article 22(3) of the TRIPs Agreement, under which the member countries must refuse or invalidate a trademark which consists of a geographical indication, if use of the trademark might mislead the public as to the true place of origin of the goods. The court also mentioned that, with respect to wines and spirits, geographical indications receive additional protection under Article 23(2) of the TRIPs Agreement.
 
With regard to Peters’ argument under Articles 24(4) and (5), the court pointed out that these provisions provide an exception to the rule and, therefore, should be construed restrictively. The court added that, for the provisions to apply, the following conditions must be met: the interested party must have filed a trademark application or registered the trademark in good faith, or have acquired rights in the mark through use in good faith (a) before the TRIPs Agreement came into force in the member country at issue, or (b) before the geographical indication became protected in its country of origin.
 
According to Articles 65(1) and (2), application of the provisions of the TRIPs Agreement could be extended to January 1 2000. Therefore, to determine whether the exception under Article 24 was applicable, the court took into account the use claimed by Peters during the period between the expiry of the registration (1996) and the year 2000. The court considered that the evidence produced by Peters did not reliably prove that, during that period, the trademark had been used in such a way as to allow the application of Article 24(5). Therefore, Article 23(2) applied.
 
The court concluded that INAO’s opposition was well founded, as Peters had failed to demonstrate that it met the conditions set forth in Article 24(5).
 
Fernando Noetinger, Noetinger & Armando, Buenos Aires

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