Court cancels mark that was repeatedly registered but never used

In Roemmers SA v Laboratorios Casasco SA (June 16 2011, only recently published) the Federal Court of Appeals in Civil and Commercial Matters has cancelled the defendant’s trademark registration on the grounds that it was in breach of the Trademark Law. Under the law, any registered trademark that is not used within the five-year statutory term should be made available to parties having a legitimate interest in using and registering identical or similar marks.
Roemmers SA applied to register the mark DIVAXEL for products in Class 5 of the Nice Classification. An opposition was filed by Laboratorios Casasco SA on the grounds that the mark applied for was confusingly similar to its earlier mark DIBAFLEX. The parties failed to reach an agreement, and Roemmers filed an action for undue opposition. As an alternative, Roemmers petitioned for the cancellation of the DIBAFLEX mark. The first instance court considered that the trademarks were not confusingly similar and, consequently, it was not necessary to examine the petition for cancellation.  
On appeal by Casasco, the Court of Appeals held that the marks were in fact confusingly similar and, therefore, proceeded to examine the petition for cancellation.  
Casasco’s trademark was initially registered in 1989. A few days before the registration was due to lapse, and in view of the impossibility of filing for renewal due to lack of use, a new application was filed for the same mark, which was granted in July 2000. A few days before the expiry of the five-year statutory term (the law provides that, after expiry of this term, any third party having a legitimate interest can seek cancellation of a trademark that has not been used), Casasco filed a new application for the registration of the same mark, but with a slightly different font. The new application was granted, and that registration was used as a basis for the opposition to Roemmers’ application.
The court’s decision to cancel the DIBAFLEX mark was based on the fact that the mark had never been used, despite having been repeatedly registered over a period exceeding 20 years. Lack of use explained why it had not been possible to renew the first registration, and also explained why Casasco had filed a new application for the same mark with a slightly different font when the five-year term was about to expire. The ruling was also influenced by the fact that Casasco had also repeatedly registered several of its unused marks.  
The court found that such behaviour was inconsistent with the legislature’s intention that marks should be registered for the purpose of using them. Continued ownership of an unused trademark through the method used by Casasco represented an arbitrary impediment to the registration of identical or similar signs by third parties. 
This explains why the court cancelled the DIBAFLEX mark, rather than dismissing the opposition. It considered that the registrations for DIBAFLEX had been obtained in breach of the law and contrary to the basic principles established in the Civil Code and the Trademark Law. This decision is in line with the November 23 2006 decision of the Federal Court of Appeals in Laboratorios Bago v Biotenk (for further details please see “FLOXAMICIN repetition mark deemed null and void”).
Fernando Noetinger, Noetinger & Armando, Buenos Aires

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