Uruguayan Newspaper El País Cannot Stop Registration of Trademark “Ediciones El Pais”

Ediciones del País SRL, also trading as Ediciones del País, applied to register the trademark EDICIONES DEL PAIS to identify legal publications in class 16. The Uruguayan company El País SA filed an opposition against the application based on its trademarks LOS DIARIOS NUMERADOS EL PAÍS, EL PAÍS, and EL LIBRO DE LOS CLASIFICADOS EL PAÍS, also in class 16. Ediciones del País then sued the Uruguayan company and requested the court to declare the opposition groundless.

The first instance court rejected the claim and ruled that the opposition had grounds, since it was confusingly similar to the trademark EL PAÍS in the same class. The court considered there were more coincidences than differences between the trademarks in conflict in the three levels of comparison and stated that, in these cases, the registered trademark must prevail over the application, since an application is not a right but the mere expectation of a right.

The trademark applicant appealed the ruling and argued that the court did not consider that the legal texts identified with the trademark EDICIONES DEL PAÍS had been marketed for over 26 years, thus constituting a de facto trademark. Likewise, it stated that currently there are 37 registrations that share the term "El País," which makes it of common use. Finally, it stated that, from the evidence provided and from the affidavits the opponent filed, it was proven that the Uruguayan company did not commercialize the newspaper El País in Argentina.

Division II of the Federal Court of Appeals on Civil and Commercial Matters overturned the appealed ruling. The Court considered that the trademark EL PAÍS of the Uruguayan company acts as a "defense trademark" to the products for communication, and that the broad dissemination and reach that the trademark has in Uruguay does not grant it a better or greater right in Argentina.

Finally, the Court concluded that Ediciones del País had a better right to register the trademark in class 16.