Trademark Containing Term “Nacional” Not Misleading

On March 15, 2024, the Argentine Trademark Office overturned the rejection of the “NACIONAL SANTA JULIA” trademark application in class 33. The application had received two office actions from the examiner and was finally rejected because it fell under the prohibitions of articles 3 paragraphs f) of Law 22362, 6 ter 1 a) of the Paris Convention, and Decree 42366/34. Said regulations state that trademarks formed by terms used by the State or including “NACIONAL”—among others—cannot be registered, to avoid misleading consumers regarding the true origin of a product that does not come from an activity of the State.

The applicant filed a petition for reconsideration and highlighted the reputation of the “SANTA JULIA” trademark based on its trajectory, history, and use. They argued that they were in the presence of a well-known trademark, under which a family of trademarks was created.

Regarding the term “NACIONAL,” they stated it was included in the trademark as a way to pay homage to two emblematic varieties of Argentine wine. Thus, including it in the mark is evocative of a characteristic of the product itself. The term “NACIONAL” is not included among those considered by legal commentators as unregistrable, which is why there are numerous trademark registrations that include it. Further, the term is also used in the names recorded in the company registry, which clearly reflects the public administration accepts that non-State entities use it.

The TMO analyzed the facts and the legal issues raised in the petition and modified the criterion it had upheld in the rejection, concluding that including the term “NACIONAL” in the trademark does not mislead consumers, since this is a mark well-established in the market and the term “NACIONAL” in it is evocative. The grounds for the rejection had sought to avoid an association or reminiscence with an origin in the State, but this could not be verified in this case.