Use of MICHELIN mark blocked in part

Argentina

In Compagnie Générale des Établissements Michelin v Le Radial SRL (Case 5326/01, December 20 2005), the Federal Court of Appeals has upheld a decision to allow, in part, the plaintiff's complaint against the defendant's use of the MICHELIN mark.

Compagnie Générale des Établissements Michelin (Michelin) brought suit against Le Radial SRL requesting an order that it:

  • cease using the mark MICHELIN and the famous 'Bibendum' device in any form;

  • cease using these marks in all types of advertising;

  • publish the decision of the court in a newspaper; and

  • pay the relevant compensation for damages.

The first instance court allowed the complaint in part, and ordered Le Radial to cease using the marks on its shop signage and to pay compensation for damages. However, it rejected the complaint in respect of Le Radial's use of the marks in advertising. Michelin appealed.

The Federal Court of Appeals upheld the earlier decision.

With respect to advertising, the court stated that use of another party's mark to advertise that party's products is lawful. The court stressed that the owner of a mark is entitled to prevent the use of that mark where it is used unfairly but not to prevent use merely for identification purposes. In the case at hand, the court held that Le Radial sold several types of original brand tyres in its stores, including MICHELIN tyres. Furthermore, the court maintained that advertising referring to "original French tyres" or "less costly Brazilian Michelin tyres", did not disparage Michelin's products.

Regarding the complaint for damages arising from the use of the brand in the signs placed on Le Radial's stores, the court repeated the principle that the mere infringement of a trademark right is not sufficient grounds to allow compensation. There must be evidence that the infringement caused loss to the plaintiff. Although Michelin had failed to prove any loss of income as a consequence of Le Radial's behaviour, the court admitted that, on many occasions, it is difficult to prove loss and, therefore, there must be a presumption that loss has occurred to ensure that unlawful behaviour does not go unpunished. Based on such a presumption, the court increased the compensation for damages to Ps12,000 and ordered the publication of the decision in a newspaper with countrywide readership.

Fernando Noetinger, Noetinger & Armando, Buenos Aires

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