Trademarks – “BUENOS AIRES”, of common use or liable to be owned?
By Antonella Balbo and Delfina Sejas.
In this article, we comment on a recent ruling of the Federal Civil and Commercial Chamber related to the trademark BUENOS AIRES, that analyzes common use elements and their weakness in trademark matters.
Can a trademark holder have rights over a term that is considered of common use?
This is analyzed in the recent ruling of the Federal Civil and Commercial Chamber, when Cervecería y Maltería Quilmes SAICA y G (CMQ) requested the cease of the opposition filed by Compañía Industrial Cervecera S.A. (CICSA) to their trademark application “BUENOS AIRES” for class 32.
The opposition’s main argument was that BUENOS AIRES is a common-use element in the intended class. Moreover, there are more than ten marks made up of these words and therefore the opponent understood that it should not be registered as a trademark itself. It should be noted that CICSA did not invoke prior registrations nor trademark applications under their name to oppose. However, they argued that with the registration of BUENOS AIRES, CMQ actually intended a trademark privilege over a term with no other additive with distinctive capacity, to the addition that the mark had not been used by CMQ in the last fifty years.
First instance’s Judge declared there were no grounds to oppose because BUENOS AIRES is of common use in that class. Consequently, it can be freely used by CMQ. However, the magistrate clarified that it is not valid for CMQ to seek to prevent its inclusion in third-party trademarks or to invoke confusion with their trademark, because they have no privilege over this set of common use. As a result, the mark must coexist with earlier marks and with those to be applied for in the future. Given that the mark is essentially weak.
The decision of the Judge was appealed by the defendant, questioning the interpretation of the elements of common use in the integration of the marks, and also arguing that the mark should contain other elements with sufficient distinctiveness.
On appeal, the Chamber examined what it means for a brand to be of “common use”. The Chamber understood that this characteristic can derive from two reasons, firstly, from the existence of several marks bearing the same word, root, or termination and registered in the same class, or the fact that the word to be registered is evocative of the product or of some of its properties or characteristics. For that reason, anyone could include it in their brand. According to this analysis, it was determined that the plaintiff must tolerate the coexistence with other brands that present sufficient differences. In other words, if a brand is weak, it means that it must admit greater approaches from other similar ones, different is the case for those that are presented as originals.
The decision also states that even when a word or set is of common use for the class, it does not make it unregistrable. Indeed, there is no provision that specifically states this prohibition. It also determined that, while BUENOS AIRES constitutes a geographical name, it would not fall into the “designation of origin” category because it does not represent a particular source of production or certain manufacturing processes. In fact, the trademark set was associated with a denomination of fantasy.
Based on the above, the first instance´s ruling was confirmed, on the basis that the defendant’s grounds were not sufficient to reverse said decision.
According to what’s been solved by the Chamber in this case, we highlight the importance of keeping in mind the judicial backgrounds that later may become useful when designing a strategy for future client cases. It is not a minor fact that it was highlighted by the Chamber itself that if a client was to receive a request based on a mark like “BUENOS AIRES”, even though it is registrable, it’s also a weak sign and must endure the coexistence with other signs with distinctive capacity.
To sum up, although the opposition has been declared unfounded, we understand that the plaintiff cannot claim that third parties do not register other signs that include the set of common use “BUENOS AIRES”. Certainly, the commonly used particles or assemblies cannot be monopolized and, therefore, are not liable to be owned.
For further information please contact: abalbo@ojambf.com and/or dsejas@ojambf.com.
