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August 1, 2015 Vol. 70 No. 14 Back to Bulletin Main Page

ARGENTINA: SONRISAS Shape Trademark Sufficient to Beat Third Party’s Unauthorized Use

On December 10, 2014, in Bagley Argentina S.A. v. Dilexis S.A., Division II of the Civil and Commercial Federal Court of Appeals decided that the shape of the well-known Argentine cookie brand, SONRISAS (meaning “smiles” in English), owned by Bagley Argentina S.A. (Bagley), was sufficient grounds for ordering Dilexis S.A. to stop using the shape under its trademark DALE ALEGRIA and to pay damages to Bagley.

Bagley, owner of the word mark SONRISAS, as well as the well-known shape applied to the cookies, which resembled a smiling face, filed a complaint requesting that Dilexis cease use of its similar shape for its cookie. Bagley alleged that Dilexis was commercializing products using Bagley’s unique shape and causing confusion to consumers.
The defendant claimed that Bagley had no exclusive rights on the design “because [the smiling face design] was widespread on numerous food products.” Dilexis further argued that consumers could not be confused by the cookies of the plaintiff because Dilexis distinguished its products with different packaging and the two products were clearly dissimilar.

The claim was admitted by the First Instance judge, who ordered Dilexis to cease using the confusingly similar shape and to pay damages to Bagley, considering that, even if the word trademarks were not similar, the use of the shape of the SONRISAS cookie, which was a well-known shape associated with the trademark SONRISAS, could not be allowed.
The Court of Appeals upheld the lower court’s decision, stating that the two trademarks were confusingly similar, that the SONRISAS trademark was distinctive with respect to Bagley’s cookies and that there was no evidence that the “smiling” cookie shape was in common use.

Compensation for damages was also confirmed, as in Argentina courts allow for a presumption of damages whenever a trademark right is breached, regardless of the actual proof of damage.

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.

© 2015 International Trademark Association