Federal Court of Appeals reviews use requirements

In Bayer SA v Craveri SA (June 23 2011), the Federal Court of Appeals in Civil and Commercial Matters has upheld a lower court decision finding that the registration for the trademark CIPROBACT had lapsed due to non-use.
Bayer AG had filed two complaints against Craveri SA:
  • the first one requested that the registration of the trademark CIPROBACT be annulled (Court File No 2720/02); and
  • the second one requested the cancellation of the registration due to lack of use (Court File No 3380/05).
Both lawsuits were heard simultaneously and a single decision was entered, which - in its relevant portions - declared that Craveri’s trademark had lapsed due to lack of use.
The decision of the Federal Court of Appeals in Civil and Commercial Matters referred only to the cancellation on the grounds of non-use, as the request for annulment had been dismissed by the first instance court (which was accepted by Bayer). This decision was subsequently upheld by the Court of Appeals.
In its considerations, the Court of Appeals stated that Bayer - a well-known pharmaceutical company - had shown that it had a legitimate interest in obtaining a decision that Craveri’s trademark registration had lapsed.
The court also analysed the requirement of use of a trademark and determined that, in this type of lawsuit, the burden of proof fell on both parties - even if the trademark owner was in a better position to prove the use of its mark, if any. In this respect, the court determined that Craveri had failed to meet its burden, while Bayer had done so despite the difficulties associated with proving a negative.
Turning to the definition of ‘use’ for the purpose of preventing a trademark registration from lapsing, the court said that an authorisation to market a medicine provided by a regulatory authority (in this case, the ANMAT) did not meet the requirement of use, since ‘use’ consists of the manufacturing and marketing of the product bearing the trademark at issue, so that its placement on the market creates awareness of the mark among consumers.
The evidence submitted by Craveri fell well short of proving that it manufactured and marketed products under the trademark CIPROBACT. Consequently, the court upheld the decision of the first instance court.
Fernando Noetinger, Noetinger & Armando, Buenos Aires

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