Neutrogena fails to rinse TAR-GEL mark off of the register

Argentina

The Federal Court of Appeals has dismissed an action filed by Neutrogena Corporation calling for the cancellation of the trademark TAR-GEL (Case 3263/97, September 29 2005).

The cancellation motion came about following Neutrogena's application to register the trademark T/GEL to identify shampoos and hair conditioners in Class 3 of the Nice Classification. The application was opposed by Joaquín Lagos, owner of trademark registrations for TAR-GEL and HOTGEL. Neutrogena applied to the court for a declaration that the TAR-GEL and T/GEL trademarks were not confusingly similar and that the TAR-GEL mark was null and void. It based its cancellation claim on Section 24(b) of the Trademark Law, which provides that trademarks are null and void when they are registered "by individuals who were aware or should have been aware that the trademarks belonged to third parties upon filing the application for registration".

The court first noted that Section 24(b) can be invoked in relation to the protection of foreign trademarks that are in widespread use, renowned or notorious. Thus, Neutrogena's claim that the TAR-GEL mark was a copy or imitation of its foreign T/GEL trademark was not contrary to the principle of territoriality on the grounds that the common interest in preventing acts against fair competition and good faith must prevail.

However, the court declared that, in order to assume that a foreign trademark is known to the individual registering it in Argentina, the foreign mark owner must meet certain requirements (namely, among other things, evidence of long-standing use, intensive advertising, prestige or notoriety). Such evidence eliminates any doubt as to whether the individual who registered the trademark in Argentina was unaware of the prior existence of the trademark abroad.

Turning to the case at hand, the court found that Neutrogena had failed to meet the requirements and its cancellation complaint was dismissed.

Fernando Noetinger, Noetinger & Armando, Buenos Aires

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