La receta artesanal is not a recipe for registration
In Establecimiento Modelo Terrabusi SAIC v Andrés Lagomarsino e Hijos SA (Case 3229/99), the Third Chamber of the Court of Appeals has overturned an earlier decision allowing the registration of the phrase 'la receta artesanal' (meaning 'the artisanal recipe') and design as a trademark. The court held, among other things, that the addition of the general phrase 'la receta' to the word 'artesanal' did not render the sign distinctive or eliminate the likelihood of confusion with the plaintiff's ARTESANA mark for similar goods.
Establecimiento Modelo Terrabusi (EMT) applied for registration of the phrase 'la receta artesanal' and design as a trademark in Classes 29 and 30 of the Nice Classification (various foodstuffs). Andrés Lagomarsino e Hijos (ALH) filed an opposition against the application on the basis that it was confusingly similar to its ARTESANA mark registered in the same international classes. During the court action, EMT disclaimed any exclusivity in the term 'artesanal' and claimed protection for the trademark as a whole.
At first instance, the court held that the addition of the phrase 'la receta' and the particular design of the mark eliminated any likelihood of confusion between the two trademarks. The court also noted that ALH's trademark ARTESANA already coexists with other marks in the same class that include the words 'artesanal', 'artesano' or 'artesana'. Consequently, it dismissed the opposition and allowed the registration to proceed. ALH appealed and the case made its way to the Third Chamber of the Court of Appeals.
The Third Chamber allowed ALH's appeal and refused registration of EMT's mark. It held that the addition of the general phrase 'la receta' to the word 'artesanal' did not render the sign distinctive or eliminate the likelihood of confusion with the ARTESANA mark. In reaching its decision it came to the following conclusions:
- As both ALH's mark and EMT's proposed registration cover similar goods that are widely available to all kinds of people, the criteria used to compare the two signs must be strict.
- The phrase 'la receta' was not original or novel, and is in fact a generic expression used frequently within the food industry.
- The word element within a composite mark has a greater importance than the graphic element.
In addition, the Third Circuit held that the fact that a number of similar marks already coexist in the same class does not lead to a presumption that the owners of those marks should tolerate the registration of new signs that are confusingly similar to their marks.
Alberto R Berton-Moreno Jr, Sena & Berton Moreno, Buenos Aires
Copyright © Law Business ResearchCompany Number: 03281866 VAT: GB 160 7529 10