Commonly used terms are not regarded per se as a source of likelihood of confusion

In this case, Accor sued Sodexho seeking to cancel the trademark “CANASTA PASS” granted in classes 9, 16 and 36. Accor held that they were the owners in Argentina of the trademarks “TICKET CANASTA” and “TICKET CANASTA ELECTRONIK” in the same classes, which they had been using them since 1990 in connection with “vouchers for food”, i.e. the same goods and services provided by Sodexho. They also held that the marks were graphically and phonetically similar, and that the elements “TICKET” and “PASS” did not possess sufficient distinctive capacity, as they both suggested the same concept.

In turn, Sodexho denied that the marks in question were similar and that they had acted in bad faith when applying for the registration of the trademark “CANASTA PASS”. Although they admitted that both parties are competitors, they argued that the terms “CANASTA” and “VALE” are descriptive and are used as such in the welfare rules. Furthermore, they admitted that “TICKET CANASTA” was used intensely and was a prestigious sign. They argued, however that the mark “TICKET CANASTA” was strongly suggestive and even descriptive, which rendered the mark weak, as its elements were both in common use. According to Sodexho, the inclusion of a shopping trolley design in Accor’s marks did not render the mark distinctive either, as such design cannot be monopolized for being common to many marks.

Regardless of the fact that both marks share the word “CANASTA” (basket), the Court dismissed the cancellation action, ruled that the marks involved could coexist without risk of confusion, and pointed out that the words “CANASTA” and “PASS”, which were placed in a different position, removed any possibility of conflict.

The Court further considered that the plaintiff had no privilege over the term “CANASTA” and therefore had no right to monopolize its use. In addition, the Court stated that both parties used their marks together with their own company names (ACCOR and SODEXHO, respectively) in their websites, which eliminated any possibility of direct or indirect confusion. The Court also emphasized that employers, who are the ones using vouchers for food, do not act lightly when hiring such services, which are mandatory since 2007.

Lastly, the Court recalled that the criteria adopted in trademark cancellation actions is not the same as in opposition proceedings, but is instead highly restrictive, for which reason it is necessary that important interests be at stake to have a trademark registration cancelled when the owner has commenced its legitimate use and generated goodwill.