Sunday, 6 February 2011

Descriptive use of another's mark is okay, rules Argentine court

Last August, in Expobicentenario SA v Arte Gráfico Editorial Argentino SA (Case 3201/10), the Argentine Court of Appeals denied injunctive relief to prohibit use of the phrase 'Argentina 200 años' ("Argentina 200 years") by the defendant.  Expobicentenario had earlier secured trade mark registration of the word mark ARGENTINA 200 AÑOS, for goods and services in Classes 16, 35 and 41 of the Nice Classification.  Media giant Arte Gráfico Editorial Argentino subsequently published a supplement of its Clarín newspaper to commemorate the 200th anniversary of Argentine independence using the expression 'Clarín Bicentenario 1810-2010', as well as 'Argentina 200 años'.

Refusing the injunction the Court of Appeals held that, according to the law, “use of a third party’s mark in a non-typical manner is not necessarily illegal”. Here, the phrase 'Argentina 200 años' was not used as a trade mark, but in a descriptive way.  The presumption that freedom of expression should be limited when a phrase contains a trade mark must be rejected when the mark is not used in a distinctive way. Such use does not fall within the scope of protection of the trade mark.

Source: "Injunction denied as trademark used in descriptive manner", by Jorge Otamendi (G Breuer, Buenos Aires), World Trademark Review, 31 January 2011

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