Lack of fame and other ELITE marks put an end to dilution claim


In American Cyanamid Company v Empresas CMPC SA (Case 6141/98, November 17 2005), the Federal Court of Appeals has reversed a first instance decision that upheld an opposition by the owner of the mark ELITE against an application to register an identical mark for different products.

American Cyanamid Company applied for the registration of the mark ELITE to cover certain preparations for killing weeds and destroying vermin in Class 5 of the Nice Classification. Empresas CMPC SA (CMPC) opposed the application on the grounds that American Cyanamid's mark was (i) confusingly similar to its own mark ELITE, registered for products made from tissue paper in Class 16, and (ii) denigrating and diluting CMPC's ELITE mark, which is well known.

At first instance, the court upheld the opposition but the Federal Court of Appeals reversed the ruling.

The court recognized that in certain exceptional circumstances the speciality principle, which grants the exclusive right to apply a mark to the goods or services for which it was registered, could be set aside. One of these circumstances is when an opposition is based on a well-known mark. The court defined a 'well-known mark' as one known by the majority of the public, regardless of whether they are consumers of the products or services distinguished by the mark. The court found that CMPC's ELITE mark was not well known.

The court noted that the mark ELITE was registered in the name of different owners in Classes 1, 2, 3, 5, 6, 7, 9, 12, 18, 20, 21, 29 and 30. This fact made it impossible for CMPC's mark to be diluted by American Cyanamid's ELITE mark. The court stated that only unique well-known marks can be protected against dilution.

The court also held that the absence of similarity between the products at issue trumped any likelihood of confusion between the marks themselves, even though the products may be sold through the same channels (ie, supermarkets).

Lastly, the court rejected the claim that American Cyanamid's application denigrated CMPC's mark. It stated that all goods in commerce, with a few exceptions, serve their own useful purpose. It concluded that it would therefore be extremely rare for any product to have a denigratory effect.

Jorge Otamendi, G Breuer, Buenos Aires

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