Coexistence allowed, but limited, for similar marks in same class

In Microsules y Bernabo SA v Syncro Argentina SAQUIF (Case 4971/97), the Federal Court of Appeal in Buenos Aires has held that two confusingly similar trademarks for the same class of goods may coexist if the products are not sold in the same places.

Microsules y Bernabo SA is the registered owner of the mark FIBALOC in respect of pharmaceutical and veterinary products. Because Microsules failed to renew the mark registration in time, the registration lapsed. When Microsules filed a new registration application, Syncro Argentina SAQUIF opposed it on the grounds that FIBALOC is confusingly similar to its mark FISCALOX, which covers pharmaceutical products only.

The federal court agreed that the marks are confusingly similar but ruled that Microsules could register its trademark in respect of veterinary products. However, the court denied Microsules' mark the right to coexist with Syncro's mark in respect of pharmaceutical products that are sold in the same places.

Jorge Otamendi, G Breuer, Buenos Aires