Rejection of company name based on famous mark will be exceptional
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The Inspección de Personas Jurídicas, the authority in charge of approving the incorporation of legal entities, has dealt with an unusual case involving trademark rights (Farmacia Ahorro SA, Expediente de Estatuto 1.781.136 del registro de la IGJ).
The approval of incorporation was requested by Farmacia Ahorro SA, a sociedad anónima (anonymous society). Energia y Vida de Argentina SA, the owner of the mark FARMACIA DEL DR AHORRO, filed a request that the name Farmacia Ahorro SA be rejected.
Energia y Vida relied on Article 59 of Resolution (6) IGJ (7/05), which establishes that a company name may be rejected in cases where the notoriety of certain names, trade names or registered marks is "objectively known" by the Inspección de Personas Jurídicas and, therefore, "the requested name does not satisfy any of the requirements under Paragraph 1 of the previous article". Paragraph 1 establishes that “the name must satisfy the requirements of truthfulness, novelty and non-similarity”.
A first internal decision rejected Energia y Vida's request and, in a further appeal, that rejection was confirmed by the Inspección. The Inspección stated that the denial of a company name would be an exception, because it applied only in cases involving marks that have an “undoubted notoriety”.
However, the Inspección stated that, as the name Farmacia Ahorro SA had already been approved when Energia y Vida had filed its request, the matter could be decided only by the courts. Since Energia y Vida had also filed an appeal, the case was sent to the courts for a decision. The appeal is still pending.
This is the first time that the Inspección has dealt with a conflict between a name and a mark. Even though it did not actually decide on the conflict itself, it did make an interesting comment - that is, that the notoriety of the mark must be "objectively known" by the Inspección and that the rejection of a company name on this ground would be exceptional.
The lessons to be drawn from the decision are unclear. It seems to imply that evidence showing the notoriety of a mark filed before the company name has been approved will be considered by the Inspección. However, the fact that the notoriety of the mark must be "objectively known" by the Inspección suggests that such notoriety must be of public knowledge.
Jorge Otamendi, G Breuer, Buenos Aires
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