Unregistered Rights: The Legal Value of Trademark Use

In 2017, José Carlos Rincón filed trademark applications for “FARMACIAS DEL AGUILA”, which were opposed by Farmacias del Aguila SA on the grounds of likelihood of confusion with its de facto trademark “FARMACIA DEL AGUILA.”

 The oppositions filed by Farmacias del Aguila were dismissed by the TMO, on the grounds that the opposing mark did not constitute an unregistered (de facto) trademark. It reached this conclusion after finding that the documentary evidence submitted failed to demonstrate the existence of a customer base. It also took into consideration that, in the past, Farmacia del Aguila had abandoned certain trademark applications after receiving oppositions from Mr. Rincon.

On appeal, the Court acknowledged the existence of an unregistered mark held by Farmacias del Aguila. In doing so, it assessed the evidence submitted, including administrative authorizations for pharmacies operating under that name, the company’s incorporation and business activity dating back to 1994, as well as an accounting certification showing the operation of 21 pharmacies, sustained revenues, and significant advertising expenditures, all of which was found to evidence the public, continuous and uncontested use of the sing.

The Court emphasized that, although the Argentine trademark system is predominantly registration-based, this does not preclude protection for unregistered signs when their use is intense and has generated demonstrable goodwill.

Based on these considerations, the Court of Appeals reversed the administrative decision and upheld the oppositions, reaffirming that the intensive and prolonged use of a mark is entitled to legal protection, notwithstanding the absence of registration.