Vivir Viajando: A Common Phrase or a Registrable Trademark?

In “Despegar.com.ar SA v. Vivir Viajando SA,” Division I of the Federal Court of Appeals in Civil and Commercial Matters dismissed the direct appeal filed by Despegar and upheld the TMO decision that had dismissed its opposition to the composite trademark “VIVIR VIAJANDO,” in Class 39.

The appellant argued that the expression “VIVIR VIAJANDO” (an ambiguous phrase that means both “live your life by traveling” and “travel all the time”) lacked distinctive character, as it was a commonly used phrase associated with tourism-related activities and, therefore, could not be monopolized. It also claimed that the applicant had failed to prove a legitimate interest in obtaining registration in the relevant class and argued that the trademark application was filed for defensive purposes.

For its part, “Vivir Viajando” relied on prior registrations for the same name in other classes, as well as on the actual use of the sign in activities related to tourism content and projects.

In its ruling, the Court analyzed both the word and graphic elements of the composite mark “VIVIR VIAJANDO” and concluded that the expression “VIVIR VIAJANDO” did not directly describe the services in Class 39 and that the sign retained sufficient distinctive character to be registered.

Regarding legitimate interest, the Court considered the applicant’s prior trademark registrations and the activities carried out under the name “VIVIR VIAJANDO” and rejected the arguments challenging the applicant’s standing to seek registration in the relevant class. Accordingly, the Court upheld the challenged administrative decision that dismissed Despegar’s opposition, thereby allowing registration of “VIVIR VIAJANDO”.