Series of defeats for Kellogg in cereal dispute

Argentina

In Kellogg Company v Pehuamar SA (Case 4827/95), the Second Federal Court of Appeals for Buenos Aires has dealt a serious blow to US breakfast cereal manufacturer Kellogg. The court dismissed Kellogg's claim for damages based on Pehuamar's alleged infringement of its CHOCOLOKO mark, and cancelled Kellogg's registrations for (i) the mark MÜSLIX, and (ii) a cereal packaging design.

Kellogg brought actions for trademark infringement and damages against Pehuamar. The damages claim stemmed from Pehuamar's temporary use of the word 'chocoloco' for a particular type of breakfast cereal. Kellogg argued that this use had infringed its CHOCOLOKO mark and interfered with its business. The infringement action was based on Pehuamar's use of the word 'müsli' for another type of breakfast cereal, which Kellogg claimed infringed its MÜSLIX mark for the same type of good.

Pehuamar contended that it had ceased using the term 'chocoloco' and that Kellogg had not suffered damage from this temporary use. It also counterclaimed for the cancellation of (i) Kellogg's MÜSLIX mark on the grounds that it did not differ sufficiently from the widely-used generic words 'müsli' and 'muesli' to justify registration, and (ii) one of Kellogg's cereal packaging design registrations on the grounds that it had not been used.

The court allowed Pehuamar's counterclaims and ordered the cancellation of the MÜSLIX and packaging design registrations. It also held that it could not award damages to Kellogg because there was no evidence to suggest that Pehuamar's limited use of the word 'chocoloco' had affected Kellogg's sales or had harmed its business.

The court further stated that 'müsli' and 'muesli' are generic words to describe a mixture of cereals, fresh or dry fruits and other ingredients that can make up a breakfast cereal. Kellogg's addition of the letter 'x' to a generic term, said the court, did not alter it sufficiently to allow registration as a trademark. It concluded that to allow such a practice would make it far too easy to convert generic terms, through the simple addition or deletion of a letter, into registrable trademarks. The court held that it was also necessary to cancel the packaging design registration as it differed substantially from that actually used by Kellogg. Relief was not available under the Paris Convention for the Protection of Industrial Property, said the court, because the convention states that any alteration arising in the actual use of a mark or design must not be an alteration of its distinctive character.

For discussion of a Venezuelan case involving Kellogg, see CORN FLAKES is generic but valid, says PTO.

Fernando Noetinger, Noetinger & Armando, Buenos Aires

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