Injunction denied as trademark used in descriptive manner

In Expobicentenario SA v Arte Gráfico Editorial Argentino SA (Case 3201/10, August 19 2010), the Court of Appeals has refused to issue an injunction against use of the phrase 'Argentina 200 años' by the defendant.
Plaintiff Expobicentenario SA owned the trademark ARGENTINA 200 AÑOS, registered for goods and services in Classes 16, 35 and 41 of the Nice Classification. Defendant Arte Gráfico Editorial Argentino SA, probably the biggest media corporation in Argentina, published a supplement of the Clarín newspaper in commemoration of the 200th anniversary of the Argentine independence using the expression 'Clarín Bicentenario 1810-2010', as well as 'Argentina 200 años' ('Argentina 200 years').

The plaintiff sought an injunction preventing the defendant from using the phrase 'Argentina 200 años'. The defendant argued that CLARÍN was a well-known trademark and was distinctive.

The Court of Appeals denied the injunction, despite the defendant's use of the registered trademark ARGENTINA 200 AÑOS. The court stated that, according to doctrine, “use of a third party’s mark in a non-typical manner is not necessarily illegal”. Here, the phrase 'Argentina 200 años' was not used as a trademark, but in a descriptive way.

According to the court, the presumption that freedom of expression should be limited when a phrase contains a trademark must be rejected when the mark is not used in a distinctive way. Such use does not fall within the scope of protection of the trademark.

Jorge Otamendi, G Breuer, Buenos Aires

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