April 15, 2015
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ARGENTINA: Legitimate Interest Needed for Non-Use Cancellation Action
On October 16, 2014, Division I of the Civil and Commercial Federal Court of Appeals of the city of Buenos Aires upheld the lower court decision in Pharma Development v. Laboratorios Casasco (Docket No. 3011/2011), which rejected a non-use cancellation action against the mark INIT in international Class 5 due to a lack of “legitimate interest” by the plaintiff.
Pharma Development filed an application for INITIUM (& design) to cover “nutritional supplements for medical use” in Class 5 and the following day filed a court action against Laboratorios Casasco, seeking cancellation of that company’s trademark INIT based on non-use.
In Argentina, provided that a “legitimate interest” by the claimant is proved, the requirement for cancellation of a registration based on non-use is that the mark has not been used within five years prior to the filing of the corresponding action. Furthermore, use of the mark as part of a trade name or in classes other than those in which it had been granted is sufficient to maintain the registration.
The plaintiff asserted that the trademark INIT could be an obstacle to securing registration of its mark. In addition, it stated that if registration for INITIUM (& design) was obtained, the defendant could still request its cancellation because a previous decision had determined that the marks were confusingly similar. Pharma Development v. Laboratorios Casasco (Docket No. 4728/2009, September 6, 2011).
The plaintiff’s mark was not opposed by any third parties, nor did it receive an objection from the National Institute of Industrial Property (INPI). Hence, registration of the trademark INITIUM (& design) was granted.
The Court of Appeals held that the “legitimate interest” requirement was not fulfilled by the plaintiff because it had obtained registration of the mark INITIUM (& design) without being opposed by the defendant nor objected by the INPI. The court said that the previous decision had no relevance to the case because it involved marks with no design and, moreover, it had a different scope of protection (products for the circulatory system). The court further held that a “generic interest” could not be a basis for canceling the mark because the trademark law provided that a “legitimate interest” was needed.
The case reveals the necessary conditions for succeeding in a non-use cancellation action in Argentine courts.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
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