Prior Use and Good Faith Prevail over Prior Registration

Germaiz S.A., an Argentine firm, had applied for the registration of the trademark "CUORE" in International class 29, which application was opposed by Bonomelli S.R.L., an Italian firm, on the basis of its prior use of the same mark for many years and in different countries. Subsequently, Bonomelli applied for the registration of the mark "CUORE ", which in turn was opposed by Germaiz.

The parties sued each other, claiming their best right in the "CUORE" mark in class 29.

The judge of first instance dismissed Bonomelli's opposition and accordingly upheld the opposition filed by Germaiz.

To this end the judge reasoned that Bonomelli’s registrations for "CUORE" from 2002 in several countries could not be the basis to protect it in Argentina, as this would contradict the principle of territoriality adopted by the Argentine Trademark Law.

Furthermore, according to the evidence submitted in the case, it appeared that the first use of the trademark “CUORE” dated back to April 7, 2006, when the plaintiff had applied for its registration.

Bonomelli appealed and complained that the a quo had failed to take into account the wide recognition and well-known character that its mark had in Italy and in other countries of the European market for corn oil.

In a divided ruling, the Court of Appeals reversed the judgment of first instance and upheld the opposition filed by Bonomelli against the registration of the trademark “CUORE” by Germaiz in Class 29, on the basis of the following arguments:

1. although in Argentina the territoriality and attributive system —on which the first instance ruling and the dissenting vote were based— are indeed the law, they do not prevent the cancellation of a trademark here if it was registered by anyone who, at the time of applying for its registration, knew or should had known that the mark belonged to a third party, in Argentina or abroad;
2. although Bonomelli’s mark was not well-known, it was old and had acquired a certain prestige, and therefore those involved in the same business could not ignore its existence;
3. Germaiz began operations of its trademark "CORAZÓN" in 1999, to sell edible oils, but no data was found on the use of the trademark "CUORE" by Germaiz;
4. although Bonomelli did not own trademark “CUORE” in Argentina, the origins of this mark go back to 1920;
5. from the audit carried out abroad, it was apparent that this brand is a leader in its segment, with high turnover and large volume of investment in advertising campaigns;
6. Germaiz could not ignore the prior existence of this foreign mark, and could not derive a right based on the almost miraculous coincidence of choosing an identical name used in the same branch, even if there was no concrete, direct and specific evidence of bad faith.

In sum, the court’s final decision applied the statutory provision, originally created by case law, according to which the deliberate registration of someone else’s trademark was invalid (section 24, paragraph b), of the Argentine Trademark Law).  Nonetheless, the fact that the decision of the district court as well as the dissenting vote of the court of appeals had decided in favor of the older registration in Argentina, illustrates the dangers of relying exclusively on the principles of good faith.