Priority Rights Over the Use and Registration of a Trademark

These two cases were tried jointly.

Since 1985 Mr. Boero had used the symbol "ABS" in the name of two companies of which he was a partner, and in 1994 he had registered trademark "GRUPO ABS". It was proved in the official file that Mr. Boero had had dealings with the American Bureau of Shipping since 1981.

The Court confirmed that there was no reasonable explanation for Mr. Boero’s conduct, who had tried to position his business in the Argentine market using the same designation as its foreign competitor.

In addition, this prior knowledge showed that Mr. Boero acted in bad faith, when he registered trademark "GRUPO ABS" No. 1,556,737 in class 42, thus treading upon third parties’ prestige and trying to expand his clientele and create confusion in the market. Accordingly, the Court interpreted that this trademark registration was null and void in its origin and confirmed the decision of the trial judge.

American Bureau of Shipping had filed the application for trademark “ABS” for certain services comprised in international class 42, and Mr. Boero had filed a notice of opposition on the basis of his prior trademark registration “GRUPO ABS”.

The cancellation of Mr. Boero’s trademark registration was applied retroactively, and therefore the opposition he filed was without merit. The Court also rejected the demand claiming that use of ABS by American Bureau of Shipping be discontinued since it was based on an invalid registration.

Finally, the Court confirmed that American Bureau of Shipping had prior rights in the name "ABS", which prevailed over Mr. Boero’ s rights, both as a trade name and trademark, and ruled that its subsidiaries had not been engaged in any infringement and that the preliminary injunction which had affected these companies should also be lifted.

For more information, please contact:

		Iván Poli
		Alejandra Morgade