Trademark Cancelled Based on Preexisting De Facto Trademark

In the case “Bremen Automotores SA y otro v. Bremen Motors SA,”  Division II of the Federal Court of Appeals in Civil and Commercial Matters upheld the lower court’s decision that had rejected the plaintiffs' claims and admitted the defendant’s counterclaim.

Specifically, the first instance ruling ordered:

1. ceasing the use of the trade names “BREMEN” and “BREMEN MOTORS”, owned by the plaintiffs, to identify their automobile sales services,
2. the partial cancellation of the trademark “BREMEN”, Registrations No. 2104739 and 2104740 in classes 35 and 36, to the name of Bremen Automotores SA,
3. lifting the opposition filed by Bremen Automotores against the trademark application for “BREMEN MOTORS (& design),” application No. 2880715 in class 35, which the defendant had filed,
4. ceasing the use of the domain name “bremenautomotores.com.ar,” owned by the plaintiffs, to identify their automobiles sales activity.

In upholding the lower court’s decision, the Court of Appeals determined that the trade names Bremen Motors and Bremen Automotores could not coexist because they identified the same services: the sale of high-end German automobiles.

In declaring the partial cancellation of the trademark “BREMEN” in classes 35 and 36, the appellate court held that the plaintiff knew or should have known, at the time of filing the trademark application, that the mark belonged to the defendant; the rightful owner of the de facto trademark and trade name “Bremen Motors.” The court emphasized that both parties were competitors in the same line of business.

To reach this conclusion, the Court analyzed the evidence provided by both parties and found that the defendant had been using its trademark since 1996 with a degree of recognition and prestige in the field, while the plaintiffs only began using their mark in 2009. Consequently, the appellate court concluded that Bremen Motors held a preferential and prior right to the contested mark.