On November 8, 2017, Division 2 of the Federal Court of Appeals on Civil and Commercial Matters upheld the first instance decision and declared the opposition filed by Kraft Foods Argentina against the trademark application “MAIZENA EXPRESS” for “a thickening agent for cooking foodstuff” in International Class 30 (“Conopco Inc v. Kraft Foods Argentina”) to be groundless.
To reach this decision, the Court considered, on one hand, that “MAIZENA” is a well-known trademark, defining it as “a quality or intangible asset of the trademark, based on the consumer´s capacity for remembering or recognizing it at a level of their external signs”, and thus established the requisite combination of two elements: mass recognition of the sign and instant association. On the other hand, the Court held that “express” is a common use term in all classes, as well as in daily life. Consequently, it emphasized that “express” cannot be monopolized by anyone. It also held that the likelihood of confusion with the trademark “EXPRESS” in connection with crackers was automatically reduced as a result of the well-known character of “EXPRESS”.
In this way the Court concluded that “MAIZENA EXPRESS” and “EXPRESS” may coexist and thus restricted Kraft Foods Argentina’s rights of the trademark “EXPRESS”.
This decision is an important precedent that establishes a strict limit and significantly reduces the defendant’s trademark rights to the term “EXPRESS”.
This insight is a brief comment on legal news in Argentina; it does not purport to be an exhaustive analysis or to provide legal advice.