Reviewing function of the Federal Civil and Commercial Chamber in the new trademark opposition resolution process
By Abril Neiman.
In July 2022, Chamber No. III of the Federal Civil and Commercial Court ruled on the merits of the case “WESTROCK SHARED SERVICES LLC AGAINST WEST PHARMACEUTICAL SERVICES INC ABOUT THE ADMINISTRATIVE APPEAL”, doing a final comparison between the trademarks at hand, exercising its review function of the administrative decision.
Before we continue with the final decision of the Court, it is important to understand the path the parties went through, given that apart from deciding on the administrative resolution made by the Argentinean Trademark Office, the Court had to issue several interlocutory rulings on the following requests made by the parties: (i) the rejection in-limine of the demand; and (ii) to open the appeal to an evidentiary stage.
In the year 2015, the plaintiff requested the registration of the trademark WESTROCK (and design) at the Trademark Office for class 20. Against this application, the defendant filed an opposition grounded on their trademarks WEST (and design) and WESTAR, both registered in class 20, subjected to resolution 183/2018, regulating the administrative instance of resolution of oppositions.
In the administrative instance, the opponent made use of every opportunity at his disposal during the opposition procedure to achieve a favorable decision for the Trademark Office to declare the opposition well-founded. In this way, after the 3-month deadline to negotiate, when the opponent was notified to ratify their claim, they: paid the official fee and ratified the opposition, filed a broadening arguments brief; then filed proof; and finally presented their final arguments.
On the contrary, the applicant chose to keep silent, passing up every opportunity to defend himself during the administrative procedure.
In January 2021, the Trademark Office made its final analysis of the trademarks and declared the opposition well-founded. With this decision, the trademark application would be rejected.
Against this decision, the applicant – and now the plaintiff- filed an appeal to a Court of Justice. In this brief, WestRock offered documentary, informative and forensic reports as evidence.
When the opponent – and now the defendant- was notified of this appeal, they asked for the rejection in-limine of the claim, and the dismissal of evidence, with legal costs borne by the plaintiff.
At this moment, we are going to divide the analysis into the 2 requests the Court had to rule on, mentioned at the beginning of this article:
(i) The rejection in-limine of the claim:
First, the Court had to analyze if the appeal fell into non-compliance with formal requirements. However, according to article 17 of Law 22.362 which provides the possibility to appeal an administrative decision issued by the Trademark Office to the Court, the claimant met every admission requirement.
Second, the Court decided to b address the defendant’s argument about “keeping silence”. In the process of the registration of a trademark, the interest of the applicant is established by the fact that he wants to acquire rights over the trademark, to be the owner, and to use it. This is why the lack of response towards an opposition can never mean a lack of interest of the applicant, neither could it be declared in default of appearance.
The new opposition resolution regulation in the administrative instance does not establish that the applicant has any obligation to appear in the process. On the contrary, it is the opponent who has the obligation to maintain the opposition, otherwise, the opposition is understood only as an informal objection.
For this reason, the Court has decided that there is no provision that establishes that the lack of answer by the applicant to the opposition has as a consequence its inadmissibility and that if it were so, it would be denying the right to exercise the action, directly linked to the constitutional right to petition – Arts. 14 and 18 National Constitution.
(ii) To open the appeal to an evidentiary stage:
In relation to this request, the Chamber cites Law 27,444 on Simplification and Bureaucracy Reduction, based on which the Trademark Office issued Resolution 183/2018 which modified the trademark resolution system.
This resolution in articles 2 and 4 states the instances and deadlines to offer evidence, with each of the parties having 15 days from the time they are served notice to offer evidence -together with their opposition brief/opposition response- and thereafter they both have 40 days to produce evidence.
Taking this into account, the Chamber affirmed that the appellant’s situation should be assimilated to that of any party in a civil proceeding, in which evidence cannot be produced in the second instance. In other words, the procedure for the resolution of oppositions in the administrative venue is understood as the first instance, at which time the appellant should have made use of his right.
WestRock deprived itself of offering evidence by not answering to the opposition, an occasion specifically authorized to do so, which then precluded.
In conclusion, the Chamber decided to reject both the defendant’s request for the in-limine rejection and the opening of evidence requested by the plaintiff.
Judgment on the merits of the case:
Before proceeding to analyze the Chamber’s decision, it is important to mention that it is one of the first appeals against a decision of the Trademark Office, since the new procedure for the resolution of oppositions in administrative venue was adopted by resolution 183/2018.
In relation to the appealed decision, the Trademark Office had declared the opposition well founded on the grounds that there were sufficient similarities in the three levels of the trademark comparison to allow their coexistence.
In view of this statement, the appellant argued not only that there were sufficient differences in the comparison levels, but also that the Trademark Office did not consider other adjectival circumstances of the case that further reduced the possibility of generating confusion for the consumer, which is the interest that must be protected and in view of which these disputes are resolved.
Considering these new circumstances, such as the commercial coexistence of both trademarks in the local and foreign market, the different products they distinguish and the differentiating elements between the trademarks, the Chamber proceeded to conduct its own analysis on the merits of the case.
First, a trademark comparison was carried out, reaching several conclusions that did not match the Trademark Office’s resolution. Emphasizing the graphic and conceptual aspects of the marks, it concluded that there are differences that prevent the possibility of confusion for the consumer since the marks have dissimilar designs and typographies, and that even if they share the word WEST -which is generalized in the class- the concept ROCK alludes to a cultural movement that prevents the possibility of a link between the marks.
Secondly, the Court specifically mentioned all the circumstances that led it to make its final decision, among which mentioned:
– That the trademark application corresponds with its company name, and that due to its trajectory and presence within the international market as a registered trademark, it deserves protection;
– That the products manufactured by each of the companies are intended for specialized audiences, while in the case of the plaintiff is dedicated to marketing packaging products as part of the packaging process for household products, beauty, beverages, tobacco, luxury, etc., while the opposing party is within the biological and pharmacological research industry.
– That the trademarks have been peacefully coexisting in 42 countries for more than five years, which weakens the opponent’s position of confusion in the market.
Finally, the Court determined that when ruling, the Court must always put itself in the shoes of the public consumer which, as we have already established, is specialized and therefore studies the product it is going to acquire beforehand.
Thus, it was decided to overrule the Trademark Office’s decision in order to admit the appeal. Thus, we are facing one of the first rulings that decide on an appeal against the decision of an opposition in the administrative venue, reaching a totally opposite conclusion. The opposition had no grounds and the losing party was ordered to pay the costs of the appeal.
To conclude, it can be seen how the Court functions as a review instance of the Trademark Office’s decisions, in which, although evidence cannot be added, the parties can add grounds to support their position in the case.
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