The Federal Court admitted an opposition based on a foreign appellation of origin

On August 12, 2010, in an interesting decision, Tribunal I of the Federal Court of Appeals for Civil and Commercial Matters of Buenos Aires in re “Peters Hnos. Cia.Com.e Ind. SA vs. Institut National des Appellations D’Origin” affirmed the lower court's ruling and declared well founded the opposition filed by the Institut National d'Appellations D'origine (INAO) against a trademark application which included a French appellation of origin.

Peters Hnos applied for the trademark MARTINIQUE (design) in international class 33 in 2003. Peters Hnos had acquired the trademark LA MARTINIQUE in 1975, and its latest registration had expired –without being renewed- on September 22, 1996. The new application encountered an opposition by the INAO based on the registration of the appellation of origin MARTINIQUE officially recognized in France on November 5, 1996.

Peters Hnos admitted that the registration of the French appellation of origin was valid but not relevant as a basis of the opposition, since it had a constitutional right on the de facto trademark MARTINIQUE used in good faith for decades. According to Peters Hnos, that de facto trademark deserved the protection stated by the Constitution and the TRIPS Agreement (Trade-related aspects of Intellectual Property rights) in that it foresees the exceptions for the prohibition or invalidation of registered trademarks consisting of appellations of origin (Section 24, 5, sub-par a) and b). 

The Court considered that the legal framework as a whole used in that case was not favorable to the plaintiff, and that the constitutional rights, which are not absolute, should be examined in the light of the laws that regulate them.

The Court took into account that the Trademarks Law No. 22,362 forbids the registration of foreign and national appellations of origin. The Court also invoked the provisions of the Fair Trade Act No. 22,802 prohibiting the use of a national and/or foreign appellation of origin unless it has been registered as a trademark prior to the date of entry into force of such law (1983).

In addition, the Court considered that the owner of the trademark lost its rights in the absence of renewal and stated that the current factual and legal circumstances were different from those in force at the time of the original registration. For example, the TRIPS Agreement (approved by Law No. 24,425) is now in force and as a matter of fact MARTINIQUE is registered as an appellation of origin in France.

Article 22, 3, of TRIPS establishes that any member will refuse or invalidate the registration of a trademark which contains or consists of a geographical indication with respect to goods not originating in the territory indicated, if use of the indication in the trademark is of such a nature as to mislead the public as to the true place of origin. Wines and spirits will receive an additional protection.

The Agreement also states in Article 24, paragraph 5, an exception to that prohibition or invalidity of a trademark containing or consisting of a geographical indication, where a trademark has been applied for or registered in good faith, or where rights to a trademark have been acquired through use in good faith either: a) before the date of application of the Trips’ provisions; or b) before the geographical indication is protected in its country of origin. It must be noted that Argentina as a developing country delayed the application of the TRIPS’ provisions until January 1, 2000.

The Court pondered that in order to solve the matter it should be considered whether MARTINIQUE had been used in good faith in our country, in the period between the date of registration of the French appellation of origin (1996) and January 1, 2000, when the TRIPS provisions entered into force in Argentina.

The Court said that there was not enough evidence showing that the trademark had been used in that period, in view of which the Trips’ general principles concerning the appellations of origin for wines and spirits (Section 23, 2) should be applied.

In conclusion, the Court decided that the exceptional situation foreseen in TRIPS (respectful of the prior use of a trademark) was not proved. Thus, the case is solved by applying article 3 Inc c) of the Trademarks Law No. 22,362 which prohibits the registration as a trademark of national and/or foreign appellations of origin and that is in accordance with fair trade principles and practices.