Trademarks – The analysis of confusion of trademarks that belong to different classes

Trademarks – The analysis of confusion of trademarks that belong to different classes

By Josefina Piñeiro.

In the case “Page Poma, E.N. c/ ALTOS LAS HORMIGAS S. AVIYC s/ cease of opposition to trademark registration”, Chamber II of the Civil and Commercial Federal Court analyzed the confusion of trademarks belonging to different classes of the international nomenclature.

The plaintiff had requested the registration of the trademark “HORMIGA NEGRA” in class 32, that covers the commercialization of beers. The firm Altos Las Hormigas S. AVYC –owner of the trademark “ALTOS LAS HORMIGAS”– opposed to the mentioned application, based on the fact that it would cause confusion with its registrations in class 33, corresponding to the category of wines. In order to stop the effects of the protest, the plaintiff filed a lawsuit against the opponent, who maintained in his reply as an incontrovertible fact that the distinctive portion of his trade name and of the registered signs is the expression “HORMIGA”.

In first instance, the Judge decided to grant the registration of the trademark application “HORMIGA NEGRA” on the basis that the signs in conflict were not confusingly similar in any of the three levels of the comparison – graphic, phonetic and ideological – and that the parties do not share the same public of their commercial activities, since wines and beers would correspond to different classes. Unsatisfied, the defendant appealed the Judge’s sentence.

In its decision, the Federal Civil and Commercial Court established a criterion diametrically opposed to the one adopted in the first instance. In this way, it expressed that beyond the fact that article 3, subsection b, of the Law of Trademarks and Designations, mentions “the same products or services”, the Supreme Court of Justice of the Nation has interpreted that expression as refers to products or services clearly linked to each other by their function, application or destination. In addition, it cited art. 6 bis, par. 1 of the Paris Convention, which expresses “similar or identical products”. In this line of argument, it declares that the expression used by the Trademark Law does not constitute any obstacle for the owner of a trademark in one class to oppose the granting of another in a different class.

Likewise, the Court adopted a realistic criterion, through which it established that “when there is a word or element in a set that has a higher weight or meaning, it is appropriate to focus the analysis on that element of the set, which is the one that will play the role of commercial identification of the product”.

In the case under examination, it determined that the products of class 32 (beers) and class 33 (wines) of the international nomenclator, are part of the same group of products: alcoholic beverages. Therefore, both are sold in the same business and attract an audience, which, in general terms, consumes wines and beers. In addition, it states that the distinctive capacity of the sign “ANTS” is beyond any doubt, while “NEGRA” lacks any distinctive force.

Likewise, the Court highlighted the various recognitions obtained by the defendant firm, which support the notoriety of its mark. Finally, having been the first to register it, it is invested with all the rights and privileges recognized by art. 4 of the Law of Trademarks and Designations.

In conclusion, the Federal Civil and Commercial Court decided to revoke the first instance decision that declared the trademarks unmistakable. With costs of both instances on their behalf.

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