Consumer confusion crosses product lines, rules court


In American Home Products Corporation v Laboratorios de Investigaciones Cosméticas SRL, a court in Buenos Aires has ruled in favour of the defendant who opposed the registration of a trademark to cover a class of goods different from its own. The court ruled that regardless of the difference between the plaintiff's and defendant's products, there was still a likelihood of confusion, thereby justifying denial of the plaintiff's application for registration.

American Home Products (AHP) applied to register the trademark PREMELLE with respect to medicinal shampoo, which comes under Class 5 (pharmaceutical products) of the International Classification of Goods and Services (Nice Classification). Laboratorios de Investigaciones Cosméticas (LIC) opposed the registration based on the fact that (i) it is already the registered owner of the trademark PRUNELLE in respect of ordinary shampoo, which comes under Class 3 (cosmetic products) of the Nice Classification, and (ii) the successful registration of the PREMELLE mark would cause confusion among the public. LIC supported the second claim by providing evidence that medicinal shampoo and ordinary shampoo are placed side by side on drug store shelves. If consumers saw a product named 'Premelle' next to its product 'Prunelle', it is likely that they would think that the products came from the same manufacturer.

The court agreed with LIC, allowed its opposition, and based on the legitimacy of that opposition, denied AHP's trademark application.

Jorge Otamendi, G Breuer, Buenos Aires

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