Trademarks - Comparative Advertising

On March 27, 2009, in an interesting decision, the Second Division of the Federal Court of Appeals of Buenos Aires rendered a decision in the case “Laboratorios Bagó S.A. vs. Bristol Myers Squibb Argentina S.A. unauthorized use of trademarks and damages” (To see full text of the decision clic here).

In its decision, the Court of Appeals dismissed the claim filed by Laboratorios Bagó S.A. (“Bago”), seeking damages and permanent relief against Bristol Myers Squibb Argentina S.A. (“BMS”), who made a promotional advertisement comparing  the different prices of pharmaceutical products (made with the drug enalapril) manufactured by competing pharmaceutical companies including BMS and Bago’s products.

In its decision, the Court of Appeals stated that:

(i) The promotional brochures made by BMS are aimed exclusively at professionals in the medical field.

(ii) Saying “the most convenient enalapril” is not derogatory and cannot be considered to be an act of unfair competition.

(iii) Comparative advertising does not fit within trademark regulations, “…but if the way by which it is made respects the fair trade and does not produce an illegitimate prejudice to third parties, it cannot be found a reason to hinder its use (as long as it does not involve in disguising someone else’s trademark, without its authorization) …”.

(iv) “…the fact that in such advertising (the one by BMS) there is a chart comparing the different prices (mentioning the ones of each trademark) it is an informative resource which does not deserve disapproval if the information is objective and accurate…”

(v) “…Making a chart containing a list of four products –identified by their trademarks- and by their prices and also includes one’s own product, with its trademark and its price, in no way can have the effect of violating the principles of the Trademark Law …nor can it be regarded as an unreasonable or abusive act in violation of the rules of the ANMAT (the Argentine drug authority)”.

This decision endorses that it would not be forbidden to use someone else’s trademarks when comparing prices, as long as the information is accurate and objective, and does not degrade others’ trademarks.