Ceasing the Use of a Trademark During Infringement Proceedings Does Not Exempt from Liability

In the case "Paraje Los Ciervos S.A. c/ Nordelta S.A. c/ Cese de uso de marcas. Daños y perjuicios" (docket 4852/2013), the plaintiff filed a motion requesting that:

1. the defendant ceased the use of the trademarks "LOS CIERVOS" and/or "CIERVOS," associated with the Puerto del Lago real estate development,
2. the court ordered it to pay damages for the infringement.

To this end, the plaintiff invoked its trademark registration "PARAJE LOS CIERVOS." The complaint was then amended to request that the oppositions filed against the defendant’s trademark applications "LOS CIERVOS" and "LOS CIERVOS PUERTO DEL LAGO"–in different classes–be declared grounded.

On March 21, 2024, the Division I of the Federal Court of Appeals on Civil and Commercial Matters partially overturned the first instance decision. The Court confirmed that the claims regarding the oppositions against the "LOS CIERVOS" and "LOS CIERVOS PUERTO DEL LAGO" trademark applications and their cease of use had become moot, but overturned the rejection of the claim for damages.

The Court held that the trademarks the defendant had applied for had been abandoned almost ten years ago. At that time, the defendant had also ceased in the use of the mark "LOS CIERVOS" to identify one of the neighborhoods in the Puerto del Lago complex, which has since been replaced by "LOS CEIBOS." However, the Court understood that this did not prevent assessing the defendant's conduct during the time in which the trademarks were used, or assessing the claim for damages.

In contrast to what was decided in the first instance, the Court of Appeals found the trademarks in conflict confusingly similar, since "LOS CIERVOS" is the mot vedette of both parties’ trademarks, and it is not commonly used in the disputed class. This means the plaintiff had an exclusive right over it, considering its highly distinctive capacity. Further, the business line in which the parties carried out their businesses was the same, the goods to be identified were identical, and the neighborhoods identified with the trademarks were nearby.

Based on these arguments, the Court considered the infringement of the registered trademark "PARAJE LOS CIERVOS" proven, and awarded damages for the use of the trademarks "LOS CIERVOS" and "CIERVOS," setting the amount for damages at ARS 40,000,000.