POWER TOOLS mark outmuscles infringing POWER PLUS mark

Argentina

In Power Tools SA v Carrefour Argentina SA (Case 4731/00, November 30 2005), the Federal Court of Civil and Commercial Appeals has held that the mark POWER PLUS for machine tools was infringing the plaintiff's POWER TOOLS mark registered for the same type of products.

Upon discovering that the supermarket chain Carrefour Argentina SA was using the mark POWER PLUS for power tools, Power Tools SA brought a complaint for trademark infringement on the grounds that the mark was confusingly similar to its own POWER TOOLS trademark registered in Class 7 of the Nice Classification. Power Tools also filed an opposition to Carrefour's application to register POWER PLUS as a trademark. Carrefour filed a counterclaim requesting the court to declare the opposition unfounded.

The Federal Court of Civil and Commercial Appeals upheld Power Tools' complaint and dismissed Carrefour's counterclaim. First the court noted that where trademarks share a component that is generic to the class of products to which they apply - in this case, the term 'power' - the rest of the elements making up the marks must be sufficiently original to counteract the descriptive element. Thus, the court reasoned, the matter at issue was to establish whether the term 'plus' could be distinguished sufficiently from the word 'tools'.

The court answered this question in the negative and concluded that POWER PLUS was confusingly similar to the earlier POWER TOOLS mark and, thus, infringing.

Regarding the determination of the existence of an injury or loss, the court held that the mere existence of a trademark infringement is not enough to award damages since the latter requires proof of the existence of an injury under Section 1067 of the Civil Code.

Given the difficulty to prove the existence of an injury subject to compensation, legal scholars and the courts have concluded that the solution is to assume the existence of the injury, on the proviso that the amount of the compensation awarded by the court must (i) meet its specific function, and (ii) not lead to undue enrichment by the plaintiff.

In this case, Power Tools failed to prove that its income had been prejudiced by Carrefour's use of the POWER PLUS mark. However, Carrefour sold around $2 million-worth of products bearing the mark POWER PLUS, which led the court to assume the existence of an injury. On the absence of evidence as to the extent of such injury, the court set the amount of compensation at Ps110,000 (about $36,000), as set forth by the Rules of Civil Procedure.

Further, the court dismissed Power Tools' claim for compensation for pain and suffering based on the damage to its commercial reputation. The court considered that Carrefour's mere selling of products of a lower quality than those of Power Tools was not enough to order Carrefour to pay such compensation, especially as (i) Power Tools' sales had not decreased, and (ii) Power Tools had failed to produce evidence of the existence of the alleged damage to its reputation.

Fernando Noetinger, Noetinger & Armando, Buenos Aires

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