Preliminary Injunctions Can Be Granted Even Against Registered Trademarks

The Twentieth Century Fox Film Corp. had requested the Court to order Mr. Lucas Pouyau to stop using the trademark "DUFF" he had registered. The District Court rejected the claim, since, according to its criterion, the claimant had not successfully shown the existence of a probable right (fumus bonis iuris).

In turn, the Court of Appeals stated that Section 50 of the TRIPS Agreement allows the courts to grant preliminary injunctions to prevent the infringement of " any intellectual property right". Although the claimant neither held a registered trademark in Argentina, nor had it timely opposed to the registration of "DUFF" by the defendant, the Court of Appeals considered that the registrations the Twentieth Century Fox Corp. owned in other countries were sufficient rights for the purposes of granting a preliminary injunction. Such rights were further supplemented by the popularity of the "Simpsons" TV program, together with the constant references made to the beer drunk by its main character.

It should be noted that the Court of Appeals made no reference to the copyrights invoked by the plaintiff in the "Duff" beer. This case suggests that, according to the Court of Appeals, trademarks held in other countries, with a certain degree of notoriety, amount to "intellectual property rights" calling for the protection under Section 50 of the TRIPS Agreement. This protection is enforceable even against registered trademarks.