ARTICLE

Unregistered Trademarks and Preliminary Injunction

On November 29, 2012 Division 1 of the Federal Court of Appeals in Civil and Comercial Matters, in re: “Vázquez, Néstor Daniel v. América TV et al”, confirmed the dismissal of the preliminary injunction requested by the musical group “Nene Malo” (“Bad Boy”) against América TV and SER TV Producciones so that the latter would refrain from presenting or promoting without their authorization any musical group in their TV show “Pasión de Sábado” (“Saturday Passion”) under the name of “Nene Malo” (“Bad Boy”) or “Los Nenes Malos” (“The Bad Boys”) . The musical group “Nene Malo” had based this request on two trademark applications for “LOS NENES MALOS” and “NENE MALO”, both published without opposition but still pending.
July 19, 2013
Unregistered Trademarks and Preliminary Injunction

This court ruling is particularly interesting not because of the decision itself but for recalling the doctrine according to which unregistered trademarks that have been used and created goodwill enjoy protection against the illegitimate use by a third party, despite the fact that they have not been registered. Division 1 indicated, in dicta, that the applicant of such a trademark can obtain a preliminary injunction even before the registration is granted. Otherwise, according to Division 1, “the holder of a de facto trademark would remain unprotected against the illegitimate use of the same mark by a third party who would profit from someone else’s reputation or to obtain goodwill”.

In this case, the Federal Court of Appeals understood that the musical group “Nene Malo” had failed to provide any proof to show the use of the unregistered trademark that would deserve such protection. The dicta of Division 1 is both fair and interesting, but it must be kept in mind that it is always best to register the mark in view of the attributive system established by the Argentine Trademark Law (art. 4 of Law 22,362).




For more information, please contact:

Cv   Iván A. Poli
Cv   Gloria Montaron Estrada

This insight is a brief comment on legal news in Argentina; it does not purport to be an exhaustive analysis or to provide legal advice.