Mattress manufacturer fails to prevent registration of BEDTIME marks in Classes 3 and 5

In three cases (for which a single judgment was issued), Sealy Argentina SA, the owner of the trademark BEDTIME in Classes 20, 24 and 35 of the Nice Classification, opposed the registration of the trademarks BEDTIME LOTION, BEDTIME BATH, JOHNSON’S BEDTIME BATH (and design) and JOHNSON’S BEDTIME LOTION by Johnson & Johnson for various products in Classes 3 and 5. 

Following the filing of the oppositions, Sealy applied for the registration of the trademark BEDTIME in Classes 3 and 5; the applications were opposed by Johnson & Johnson.

Sealy claimed that BEDTIME is a well-known mark and that, should the court declare that the mark is well known, Sealy would have a basis to succeed in further oppositions against applications in different classes.

In Sealy Argentina SA v Johnson & Johnson (Case No 9635/2009), Sealy Argentina SA v Johnson & Johnson (Case No 9989/2005) and Johnson & Johnson v Sealy Argentina SA (Case No 6643/2007), the Court of Appeals (Second Chamber), confirming the criteria set forth in prior cases, held that:

• a well-known mark is a mark that is known by the majority of the public, whether or not they are consumers of the product at issue, meaning that the mark must be recognised beyond its industrial or commercial scope; and
• well-known marks should be associated with a particular product or service.

The court rejected Sealy’s argument that BEDTIME was a well-known mark and that consumers could be confused. The court stated that it was unlikely that anyone buying a cosmetic product would believe that such product was made by the same company that manufactures mattresses and pillows.

The court thus confirmed the first instance decision, finding that Sealy’s opposition against Johnson’s applications was ill-grounded, and that Johnson’s opposition against Sealy’s applications was well-grounded.

Jorge Otamendi, G Breuer, Buenos Aires