Acknowledgement of Prior Rights Over a Trademark in Argentina

In a recent decision (in re: “Boero Andrés v. ABS Americas et al. seeking cease of use”, Case No.8525/99; and consolidated lawsuit “American Bureau of Shipping v. Boero Andrés – seeking to remove an opposition”, Case 6813/02) which put an end to a more than 10 year-long trademark dispute which discussed who had prior and better rights over ABS in Argentina, Division I of the Federal Court of Appeals in Civil and Commercial Matters acknowledged American Bureau of Shipping and its ABS related group of companies prior and better rights in ABS, in Argentina, and over Boero’s use of ABS and registration of GRUPO ABS, in bad faith.

In December 1999, Andrés Boero (“Boero”) filed a full lawsuit against American Bureau of Shipping (“Abs”), ABS Group, ABS Americas and ABS Quality Evaluations, Inc., all of them very well-known US companies rendering services in the field of classification and certification business, including vessel certifications, seeking the cease of use of ABS as a corporate and trade name and as a service mark. At the same time, Boero obtained an interlocutory injunction ordering Abs and its related companies to immediately cease in any use of ABS, which prevented them from rendering services in Argentina.

Boero grounded his claim on his use of ABS at least from 1985 as part of the corporate and trade name of some laboratories and on his trademark registration for GRUPO ABS, granted on July 30, 1995, for all goods in international class 42.

In turn, Abs filed a reply to Boero’s complaint and counterclaimed seeking the cancellation of Boero’s registration for GRUPO ABS arguing that Boero’s use of ABS and the registration of GRUPO ABS were made in bad faith as Boero had maintained commercial dealings with Abs before starting the use of ABS and applying for the registration of GRUPO ABS. Moreover, in 2000 Abs filed a trademark application for ABS, in class 42, which encountered an opposition by Boero.

The first instance federal court issued a decision rejecting Boero’s claim seeking the cease of use of ABS and accepting Abs’s counterclaim seeking the cancellation of Boero’s trademark GRUPO ABS, in international class 42. At the same time, the court declared Boero’s opposition to the application for ABS, in international class 42, unfounded.

On March 22, 2011, the Federal Court of Appeals in Civil and Commercial affirmed the lower’s court decision, with costs.

In so deciding, the Appellate Court concluded the following:

1. that Abs has used ABS in Argentina at least from 1979 as trade name and as an unregistered trademark, i.e.: well before Boero;
2. that from 1981 to 1983 Boero, representing two local laboratories, maintained commercial dealings with Abs and knew or should have known the certification services rendered by Abs and the prestige of the ABS name and mark;
3. that on the basis of his prior knowledge of Abs, Boero’s use of ABS and registration of GRUPO ABS were made in bad faith and trying to take a free ride on Abs’ prestige;
4. that due to the cancellation of Boero’s trademark registration GRUPO ABS, his opposition against Abs’ application to register ABS should be declared unfounded; and
5. that the petition seeking the cease of use of ABS by the other Abs related companies should also be rejected as they have used ABS under an authorization by Abs.

This decision is important, as the Federal Court of Appeals has acknowledged American Bureau of Shipping prior rights in ABS, even when it had no trademark registration (1), based on its prior use of ABS in good faith, and Boero’s bad faith use and registration. It is also important as it put an end to the interim prohibition against Abs related companies to render services in Argentina under ABS.

Marval, O'Farrell & Mairal advised American Bureau of Shipping and its related companies in the dispute. The advisor team included partner Miguel B. O’Farrell and associate Diego Fernández.

(1):Section 4 of the Trademark Law provides that the ownership of a trademark and the exclusive right to use it is acquired through registration.