Being Well-Known was not Enough

In this case the plaintiff had filed a complaint against the opponent, seeking to have the opposition declared groundless and arguing important differences between the marks involved. He held that his mark had a logo of two horses ridden by polo players who crossed their sticks, the word mark “LA MARTINA” and the legend “TRADICION DE POLO ARGENTINO”, while the opposing mark was only formed by the word mark elements “FINCA LA MARTINA”.  He further argued that his mark was well-known and he provided chronological details of the use of his mark in Argentina and abroad in connection with leather bags and polo shirts. He also indicated that he had been the official supplier to the International Polo Federation in international championships and had been connected with the Argentine Polo Association. Later on he incorporated additional arguments to his complaint to report his ownership of numerous registrations with the term “LA MARTINA”.

In turn, the opponent contended that the mot vedette of the mark filed by the plaintiff was “LA MARTINA” which had letters of bigger size and font than the phrase “TRADICION DEL POLO ARGENTINO”, and cited relevant decisions of marks formed by designs and word elements where difference was based on the word elements. Defendant also argued direct and indirect confusion and further pointed out the existence of several registrations with polo player designs, which weakened their differentiating power.

In first instance the marks were held to be confusingly similar, whereupon the plaintiff appealed from this decision.

The Court of Appeals acknowledged the fame of the mark “LA MARTINA” in connection with polo clothing, holding the mark to be well-known in that market. Being “well-known”, according to the Court, is a degree that only a few marks can attain and which implies two elements: the massive recognition of the signs by all consumers and not only the particular buyer of that particular market, and the spontaneous association people make between the sign and the product. But the Court found here that the marks involved were too close and therefore could not coexist side by side based on the real possibility of confusion because they were well-known and could mislead consumers as to the origin of the products when acquiring them, unless plaintiff specifically excluded and refrained from launching premium wines and high range sparkling wines to the market, which were the goods covered by the opposing mark.

This decision shows that the well-known character of a mark is not per se enough to justify the inclusion of the mot vedette of another mark  in classes where being well-known could cause direct and indirect confusion among consumers.