Class Relationship Must be Established in Oppositions between Marks in Different Classes

The Court considered that there were no actual facts which justified setting aside the specialty principle which rules trademark matters and confers protection only to the goods/services protected by each mark (Case 3382/13/CAI, “Villamayor Victor Daniel v. Schnaider, Diego”).

In this case, the plaintiff who worked in the real estate market since the year 2011 filed a complaint against Mr. Schnaider seeking to have the opposition declared groundless.  Mr. Schnaider had based his opposition on a trademark registered in a different class from those where Mr. Villamayor filed his applications, but he did not prove either his commercial activities or the relationship between Class 35 (where the opposed mark was filed) and classes 36 and 45 (where the opposing marks stood).

In first instance, the Judge accepted the complaint with costs imposed on the defendant. This decision was appealed by defendant, arguing that the marks in question were identical and that they covered similar services, and that the lower court’s interpretation of the specialty principle was in error.

The Court of Appeals affirmed, holding that although there are some situations which justify setting  aside the specialty principle –such as for example the similarity between products, identical raw materials or connection between market distribution channels– the opponent should have proved the circumstances which supported his opposition and justified the reason why the specialty principle should have been set aside.  General or vague statements did not suffice.  This burden was not met by Mr. Schnaider, who failed to accurately prove his commercial activities and to what extent the services involved in Class 35 overlapped with those of Classes 36 and 45. Furthermore, the Court held that Mr. Schnaider did not prove use of his mark or submit evidence of how he would have been affected by the registration of the mark he had opposed.

In view of the above, on the basis of the specialty principle the Court considered the fact that the marks in question were identical to be irrelevant, and emphasized that actual facts are those which indicate when it is justified to set aside this principle; it also pointed out that consumers and commercial practices were not affected in this case.

In opposition cases involving marks in in different classes it is therefore very important for the opponent to clearly and precisely justify why  the general specialty principle should be left aside.