SUTTER Case sees first decision to be based solely on dilution

Argentina

In Sutter Finanziaria SpA v Suter SA (Case 6076/97, July 28 2005), the Federal Civil and Commercial Court of Appeals has rejected an application to register trademarks incorporating the name 'Sutter' on the basis that they diluted the well-known mark SUTER. This appears to be the first time that a case has been decided in Argentina solely on the basis of dilution.

Sutter Finanziaria SpA applied to register the marks SUTTER CLEAN, SUTTER DEO, SUTTER FLOOR and SUTTER HAND for cleansing products for professional use in Class 3 of the Nice Classification. Suter SA, a local winery that has been trading for more than a century, opposed the applications on the basis of its mark SUTER registered in Class 33 for wines, as well as a defensive registration in Class 3. (Defensive registrations are permitted in Argentina since a trademark registered and not used in one class shall not lapse if the same mark has been used in the marketing of a product or provision of a service included in other classes.)

The opposition was upheld and Sutter Finanziaria appealed.

The first instance court rejected the appeal and refused registration of Sutter Finanziaria's marks based on the notoriety of Suter's SUTER registration. It also held that the marks were confusingly similar. Sutter Finanziaria appealed alleging that (i) SUTTER is a well-known trademark in several European countries for professional cleansing products, and (ii) its products have been marketed in Argentina since 1996 without complaint from Suter. In response, Suter requested protection of its trademark against dilution.

The Federal Civil and Commercial Court of Appeals affirmed the lower court's decision stressing that (i) since SUTER is a well-known mark it benefits from a higher level of protection, and (ii) dilution "is one of the greatest damages that a well-known trademark can suffer, since it affects its distinctive power". Therefore, the court dismissed Sutter Finanziaria's arguments that the differing channels of trade, consumers and products meant that there was no risk of confusion as these considerations would only have been relevant in a case of direct confusion but were "futile to weaken the damage of dilution of a well-known mark".

Argentine courts have typically refused to consider claims of infringement through dilution in isolation. They have always made a point of examining whether a risk of confusion is also present. However, this case indicates that the courts are now prepared to use the doctrine of dilution to protect well-known marks.

Agustina Martínez Estrada, G Breuer, Buenos Aires

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