YUKON marks for different services allowed to coexist


In Calás v Raúl Batalles SA (Case 5110/97), the Court of Appeals for Federal Civil and Commercial Matters has dismissed the defendant's opposition to the plaintiff's application to register the mark YUKON, even though the defendant owned a prior registered identical mark. The court held that the marks could coexist on the grounds that the services provided by the defendant under the YUKON mark were completely unrelated to the plaintiff's services.

Rolando Calás filed an application to register the word and design mark YUKON for real estate services in Class 36 of the Nice Classification. Raúl Batalles SA opposed the registration based on its identical word mark YUKON, registered as a mark for, among other things, the sale of fire extinguishers in Class 37. Raúl Batalles refused to withdraw its opposition during the preliminary negotiations and the mediation process. Calás subsequently filed a court action for dismissal of the opposition.

Despite finding that the marks involved were identical, the court agreed to dismiss the opposition on the grounds that Raúl Batalles had not proven that (i) its services in Class 36 had any relationship with those provided by Calás in Class 37, or (ii) there was a likelihood of confusion as to the origin of the two parties' marks. It further held that the marks had coexisted peacefully for many years. Accordingly, the court dismissed the opposition. Raúl Batalles appealed.

The Court of Appeals for Federal Civil and Commercial Matters upheld the first instance decision noting that it was based on the principle of speciality. This principle provides that the owner of a trademark has rights to the exclusive use of the mark in connection with the goods or services covered by the registration and that these rights should prevail unless:

  • a prior identical mark is famous;

  • there is a close relationship between the goods or services covered by the opposing marks, even though these goods or services are in different classes; or

  • there is a likelihood of confusion as to the origin of the goods or services.

The court reasoned that it was up to Raúl Batalles to (i) prove that consumers would be confused were Calás's application to be accepted, and (ii) indicate in detail which specific products or services would lead to such confusion. The court held Raúl Batalles had failed to do so.

The court also rejected Raúl Batalles's contention that its mark was famous. To enjoy such a status, said the court, the mark would have to be recognized by a large part of the public, which requires that:

  • the mark has been registered for a long time;

  • the mark has been widely used; and

  • a significant amount has been spent on advertising.

A review of Raúl Batalles's accounting books revealed that the investment made on advertising was limited. Consequently, the court concluded that the mark was not famous and thus could not be the basis of an opposition action.

Juan Martin Minorini Lima, Sena & Berton Moreno, Buenos Aires

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