Famous and Well-Known Marks Committee Participates in City of Buenos Aires Public Bar Association Panel

Published: May 15, 2018

Federico Berger Buenos Aires, Argentina

On April 25, INTA’s Famous and Well-Known Marks-Latin America and Caribbean Subcommittee (FWKM Committee), participated in a panel titled “Risk of Genericide of Famous Marks,” which took place at the City of Buenos Aires Public Bar Association in Buenos Aires, Argentina. The event was organized by the Industrial Property Institute of the City of Buenos Aires Public Bar Association (the Institute) on the initiative of the FWKM Committee-Latin America and Caribbean Subcommittee. This marks the first joint activity between INTA and the Institute.

The panel, which drew approximately 60 attendees, including lawyers, trademark practitioners, and industrial property agents, aimed to raise awareness about the negative effects of so-called genericide on famous marks and to stress the importance of famous marks owners taking action in order to prevent their trademarks from becoming generic. The panelists included Carolina Montero (Abril Abogados, Spain), a member of the FWKM Committee-Europe and Central Asia Subcommittee, and Federico Berger (Argentina), a member of the FWKM Committee-Latin America Subcommittee, with the Subdirector of the Institute, Gabriela Yoshihara, as moderator.

Mr. Berger introduced INTA and provided an overview of the topic, followed by Ms. Montero, participating via Skype from Spain, whose presentation focused on the European Union (EU) perspective on genericide. She explained the EU legislation in connection with cancellation actions due to genericide, along with some relevant case law on that topic, such as the Kornspitz case (C-409-12, Backaldrin Österreich The Kornspitz Company Gmbh v. Pfahnl Backmittel GmbH, Mar.6, 2014). The presentation also included some examples from the EU marketplace. Ms. Montero’s presentation was particularly informative for the audience, since cancellation actions for trademarks that become generic after application are not available in Argentina.

Later, Mr. Berger explained the situation for trademarks that have become victims of genericide according to the Argentinean Trademark Law. He also explained some local relevant case law on that topic, and the various actions a trademark owner might take in order to avoid genericide.

The event was organized with the help of the local industrial agents associations, including the Argentinean Industrial Property Agents Association and the Chamber of Industrial Property Agents of the Argentine Republic, which publicized the event among their members. The Instituto Nacional de la Propiedad Industrial also helped to publicize the activity.

The Institute was pleased with the outcome of the event and indicated its interest in working together with INTA on future activities.

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