FLOXAMICIN repetition mark deemed null and void

Argentina

In Laboratorios Bagó v Biotenk (Case 6463/2001, July 7 2006), the Federal Court of Appeals has ordered the cancellation of a repetition mark - that is, a mark that had been registered for the sole purpose of evading the use requirement of a previously registered identical mark.

At the end of 1999 Biotenk began marketing a pharmaceutical product for the treatment of urinary infections called Floxamicin Biotenk. It filed an application for registration of that mark in September 2000. Laboratorios Bagó opposed the application on the basis of its mark FLOXAMICIN registered for an antibiotic. Bagó also sought an injunction against Biotenk's use of FLOXAMICIN BIOTENK and damages.

Biotenk counterclaimed that Bagó's FLOXAMICIN mark had been filed to evade the use requirement of Bagó's previous identical FLOXAMICIN mark and thus was null and void. Bagó's first registration for FLOXAMICIN was granted in July 1993. It applied for the registration of a new FLOXAMICIN mark for the same goods, but in block letters, weeks before the five-year grace period for use was due to expire.

The first instance court decided in Bagó's favour. It declared that the marks FLOXAMICIN and BIOTENK FLOXAMICIN were confusingly similar and ordered Biotenk to cease use of the BIOTENK FLOXAMICIN mark. The Court of Appeals revoked that decision and declared Bagó's registration for FLOXAMICIN null and void.

The court stated that Bagó forced the letter of the law to obtain a mark while lacking the legitimate interest of using it. Its speculative registration was contrary to the law. By filing for registration of an almost identical mark to its previous registration, Bagó attempted to elude the consequences of not having used the previous registration, thus knowingly violating a basic principle set forth in the Argentine Trademark Act, which is that trademarks are registered to be used.

Agustina Martínez Estrada, G Breuer, Buenos Aires

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