“New” old use prevails over “old” old use

The conflict arose over the use of the name “PATIO BULLRICH” for a shopping mall and the applications for registration of that mark in International Classes 16, 35 and 42 by Patio Bullrich Shopping Center S.A. (“Patio Bullrich”).

In 1987 a company related to Patio Bullrich had acquired from Adolfo Bullrich a building where many years ago a cattle market had operated under the name “Patio Bullrich”; on the following year the shopping mall began operating under that name in the same building. In 1991 Adolfo Bullrich applied for the registration of trademark “PATIO BULLRICH” in International Classes 16 and 42 (opposed to by Patio Bullrich) and in 1995 demanded that the latter stop using the “PATIO BULLRICH” name and trademark, arguing that the sale of the building did not include the name. On its side, Patio Bullrich had applied for the registration of that same mark in 1994 (in turn opposed by Adolfo Bullrich), and in the ensuing litigation pointed out the uncontested use of said name, consented to by the counterpart, and the latter’s bad faith in applying for the same mark in connection with activities it had never carried out before.

The court emphasized that the name and mark “PATIO BULLRICH” was used in connection with a renowned shopping mall and also pointed out that the public had no knowledge of Adolfo Bullrich’s activities (cattle auction) under said name, which had ceased nearly a century before. In contrast, the current shopping mall had acquired a notoriety and reputation which had long surpassed the recollection of a property formerly used for the sale of livestock. The court also dismissed as intolerable the applications for “PATIO BULLRICH” filed by Adolfo Bullrich “at a time when said mark enjoyed a fame that had not been earned by [Adolfo Bullrich]”.