Invoking Confusion is Enough to Prove the Violation of a Subjective Right in Non-Use Cancellation Cases

In the case "Walmart Apollo LLC v. García Acevedo, Gonzalo” (Case 15.338/2023), Division I of the Federal Court of Appeals in Federal Civil and Commercial Matters overturned the Trademark Office’s decision  that had rejected the non-use cancellation action filed by Walmart.

Walmart requested the non-use cancellation of Garcia Acevedo's trademark AGRICUPON (Design) and invoked the violation of its subjective right—a requirement of the regulations—in the confusion with its figurative trademarks:

The TMO rejected the non-use cancellation action without analyzing the merits of the matter, on the grounds that the plaintiff had failed to prove the violation of a subjective right. In reaching this conclusion, the TMO stated that the trademarks the plaintiff invoked were already registered and that the trademark AGRICUPON had not prevented obtaining said registrations. Therefore, the alleged confusion was not detrimental to Walmart’s subjective right.

Walmart appealed the TMO’s decision before the Federal Court of Appeals and argued that the violation of its subjective right was not based on the fact that the trademark AGRICUPON was an impediment for registering its trademarks, but on the trademark dilution of its already-granted registrations and the likelihood of confusion.

The Court of Appeals analyzed the case and determined that Walmart had fully proven the violation of its subjective right through the claimed confusion. Consequently, it analyzed the other grievances Walmart invoked and concluded that Garcia Acevedo had not provided evidence to prove use of the challenged trademark. Therefore, the Court decided to declare the cancellation of the trademark AGRICUPON based on non use.