Argentine Court upholds TM opposition based on unregistered mark

A recent note on the Argentina litigation Del Olmo v Pastas Frescas San Genaro SRL (Case No 13021/07) has thrown some interesting light on  the status of trade mark oppositions based on unregistered marks.

In this particular instance Mr Del Olmo applied for the registration of the figurative mark SAN GENARO (right) for goods in Class 30 of the Nice Classification. Pastas Frescas San Genaro SRL opposed, alleging that the mark had been in use since 1979 for “pasta” in Class 30, though it had not been registered.  At first instance the judge declared that the opposition was well grounded and rejected the application. but how would the Court of Appeal react?

In the event, the Court of Appeals confirmed the decision and admitted evidence that showed that the opponent's mark had indeed been used intensively in the Province of San Juan (and also elsewhere) for a quarter of a century, having won several prizes during that period.

According to the Court of Appeals, even an unregistered mark deserves the protection of the law “at least through the application of the general principles of law” and in certain cases through the application of Article 953 of the Civil Code, which considers that acts carried out in bad faith, as well as acts contrary to good practices and morals, are null and void.

Source: "Court of Appeals confirms that unregistered marks deserve legal protection", Jorge Otamendi (G Breuer), Buenos Aires, published online on World Trademark Review, 13 November.