Plaintiff defeated in battle of the bakers
In Andres Lagomarsino e Hijos SA v Morixe Hermanos SACI (Joined Cases No 2163/2006 (cancellation on the grounds of non-use) and No 5667/2006 (opposition to the registration of a trademark application)), the plaintiff’s claim for the cancellation of the defendant’s mark has been rejected, and the defendant’s opposition to the registration of the plaintiff’s mark has been upheld.
The plaintiff applied for the registration of the trademark PANADERA (Spanish for 'female baker'). The defendant filed an opposition based on its registration for LA PANADERITA (Spanish for 'little female baker').
Argentina’s legislation provides that any third party with legitimate interests is entitled to apply for the cancellation of a trademark on the grounds of non-use when such trademark has not been used within a period of five years prior to the filing of the action. In the present case, the plaintiff applied for the cancellation of LA PANADERITA, registered under No 1.510.411 and renewed under Serial No 1.984.393, on the grounds of non-use. Argentina's legislation also establishes that, in order to renew a mark, an applicant must merely file an affidavit with the Trademark Office declaring under oath that the mark was put to genuine use during the past five years.
The interesting point about this last requirement is that, if the affidavit is a false declaration, and the mark was not actually used within the past five years, then the trademark is null, and later use of the mark will not prevent it from being cancelled if a third party requests its cancellation. Consequently, the plaintiff claimed not only that LA PANADERITA should be cancelled on the grounds of non-use, but also that the affidavit filed by the defendant for renewal of the trademark was a false declaration.
The plaintiff was found to have sufficient interest to request the cancellation of LA PANADERITA, as the trademark constituted an obstacle to the registration of LA PANADERA. Nevertheless, an expert accountant’s report revealed the existence of a few invoices showing that flour marked with LA PANADERITA had been sold. The judge held that the quantity of the sales "do not strike me as insignificant nor as a simple pretext to achieve a legal objective”.
The plaintiff’s cancellation claim was thus rejected, and the defendant’s opposition was upheld on the grounds that the trademarks were similar.
Jorge Otamendi, G Breuer, Buenos Aires
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