Trademark application rejected despite withdrawal of opposition

In AES Property Corp v Instituto Nacional de la Propiedad Industrial (Case 12336/2003, August 9 2012), the Court of Appeals has issued an interesting decision in a case in which the opponent had withdrawn its opposition.

The plaintiff applied for the registration of the mark AQUA SHELL to cover "water-resistant garments" in Class 25 of the Nice Classification. Shell International Petroleum Company Limited opposed, alleging that the mark applied for was confusingly similar to its mark SHELL, which was registered for goods in the same class. Shell subsequently withdrew its opposition. 

Despite the withdrawal, the Trademark Office refused to register the mark, stating that the parties' marks were confusingly similar. The plaintiff appealed, but the first instance judge and, subsequently, the Court of Appeals, confirmed the rejection.

The Court of Appeals reiterated that the Trademark Office, even absent opposition by a trademark owner, has the power to refuse to register a trademark if it is confusingly similar to a prior trademark, because the aim of the trademark law is the protection of trademark owners, as well as consumers. It also stated that the marks must be "clearly distinguishable".

The Court of Appeals also noted that SHELL was a well-known mark. 

Based on this decision, it can easily be deducted that, if the mark applied for is confusingly similar to an earlier mark, the registration will not be granted, even if the owner of the earlier mark has withdrawn its opposition - and, arguably, even if it has consented to the registration of the mark.

Jorge Otamendi, G Breuer, Buenos Aires