Use of sports club's marks on magazine covers is infringing

Argentina

Argentina's Federal Court of Appeals has reversed a first instance decision, finding that Editorial Atlántida SA's (Atlántida) use of Club Atletico Boca Juniors' (Boca) word mark, logo and colour combination mark on the cover of a sports magazine supplement amounted to trademark infringement (Case 7490/98, March 17 2005).

Atlántida, the publisher of a well-known sports magazine, published a supplement that featured on its front cover Boca's name, logo and the blue and gold colour combination used, among other things, on the shirts of its famous soccer team. Atlántida did not use the marks to inform the public about Boca's activities but rather as trademarks identifying the supplement and a CD-Rom that was sold with it.

Boca filed an action against Atlántida for trademark infringement but the first instance court rejected its claim.

The Federal Court of Appeals reversed. It found that trademark infringement can occur where (i) there is confusion, or (ii) an unauthorized user benefits from the goodwill attached to the mark it uses, even without evidence of confusion.

The court stated that providing information on any subject is protected under the constitutional right of free speech. However, in the present case, Atlántida had not used the marks with the purpose of providing information on Boca, but instead it was using them to identify its own publication, the actual name of which was not prominently displayed. The court concluded that such use exceeded the legal limits of the right to free speech and therefore it constituted trademark infringement. The court further held that by using Boca's marks on an unknown magazine, Atlántida had taken unfair advantage of the goodwill attached to Boca's trademarks, thus diluting the strength of the marks.

The court dismissed Atlántida's counterclaim that Boca's colour mark was invalid. The court cited its decision of July 4 1996 in Case 11772/94, which revoked a decision from the Trademarks Office refusing protection to Boca's combination of the colours blue and gold. In that case, the court stated that if a combination of colours is sufficiently distinctive, is original and fulfils the role that a trademark is required to play (ie, it differentiates products and helps the selection process), then it is registrable. In the infringement case, the court stressed the fact that Boca had used the colour combination for many years in relation to sportswear, in particular its soccer team's shirts. Accordingly, the mark was distinctive and thus valid.

Fernando Noetinger, Noetinger & Armando, Buenos Aires

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