Recognition Has Its Limits: IPFS Coexists with YPF

Division II of the Court of Appeals in Federal Civil and Commercial Matters overturned, in a split vote, a decision that the Argentine Trademark Office has issued. This decision had upheld the oppositions YPF SA had filed against the registration of the IPFS trademark, applied for by Protocol Labs Inc, to distinguish goods and services in classes 9 and 42.

The Trademark Office had found that the well-known status of the YPF trademarks required applying a severe standard of comparison and that the similarities between the signs could give rise to a likelihood of indirect confusion as to the commercial origin of the goods and services concerned.

Upon reviewing the decision, the majority of the Court of Appeals held that the signs displayed sufficient differences to allow their coexistence.

The court of appeals also considered that the acronym IPFS derives from the initials of the expression “InterPlanetary File System” and identifies a distributed file system related to the storage and transmission of data Protocol Labs develops. The Court thus found that the choice of the sign was reasonably connected with the applicant’s business activities and that it was not intended to take advantage of YPF’s reputation.

The majority further took into account that the goods and services identified by the IPFS trademark are primarily aimed at users with a certain degree of familiarity with, and attentiveness to, the technologies involved.

Although YPF’s reputation was not disputed, the Court held that this circumstance was not enough to preclude the registration of IPFS. It especially noted that YPF’s strong association with the hydrocarbons and energy sectors operated, in the circumstances of the case, as a factor that differentiated the signs, since the goods and services IPFS covers are related to computer protocols, distributed data storage, and Internet technologies.

Lastly, the Court held that the protection afforded to a well-known trademark cannot automatically result in a general monopoly extending across all fields of activity. Rather, it requires evidence of a concrete likelihood of confusion, an erroneous assumption of a commercial connection, unfair advantage, or dilution, none of which the Court found to be present in this case.

On the basis of these arguments, the Court upheld by majority the appeal Protocol Labs filed, reversed the challenged administrative decision, and dismissed as ill-founded the oppositions YPF had filed against the trademark application IPFS in classes 9 and 42.