Federal court issues recovery order for NORTOX
In Nortox Agroquimica SA v Nortox SRL the Federal Court of Appeal has affirmed a lower court's decision to grant the plaintiff's request for (i) a recovery order that transfers the Argentine registration of the mark NORTOX from the defendant to the plaintiff, and (ii) an order cancelling the defendant's trademark and company name registrations.
Since 1965, the plaintiff, a Brazilian company, has made extensive use of the Brazil-registered trademark NORTOX to market agricultural fertilizers, herbicides and pesticides. The defendant, an Argentine company with which the plaintiff had commercial dealings, obtained an Argentine registration of the trademark NORTOX by virtue of an assignment from a third party. The third party had been authorized by the plaintiff to register the mark for the purpose of concluding a business deal in Argentina on its behalf. When the plaintiff itself tried to register in Argentina a similar term, which included the name 'Nortox', the defendant filed an opposition based on the assigned NORTOX mark. The plaintiff ended its commercial relationship with the defendant and requested that the defendant assign to it the Argentine NORTOX mark. The defendant replied that it would assign the mark only if it received monetary consideration in exchange.
The plaintiff then filed an action requesting the court to:
- issue an order of recovery, effectively re-assigning the mark to the plaintiff;
- cancel the defendant's trademark registration; and
- cancel the defendant's company name registration.
During the court proceedings, the plaintiff provided evidence that the defendant knew of the plaintiff's registration and use of the trademark in Brazil. The court of first instance therefore found in favour of the plaintiff and granted all of its requests. The defendant appealed.
The Federal Court of Appeal affirmed. It concluded, based on the evidence presented at trial level, that the defendant had obtained the registration of the trademark and registered its company name with full knowledge of the plaintiff's Brazilian trademark and name. It had also acted in bad faith, said the court, when it requested monetary consideration to return a mark that it knew to be owned by the plaintiff.
Alberto R Berton-Moreno Jr, Sena & Berton Moreno, Buenos Aires
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