Federal Court Rules It Has No Jurisdiction to Hear Cancellation of Trademark Application

Terrawind Reps SA de CV sued Maria del Pilar Lozano Mancipe to obtain the cancellation of several trademark applications including TERRAWIND GLOBAL PROTECTION, TERRA WIND, and TERRA WIND ASSIST in classes 36, 39, and 44. Terrawind based its claim on the bad faith of Lozano Mancipe, as they claimed she knew or should have known the existence of Terrawind and its trademarks, and argued that the action is of exclusive jurisdiction of the courts, since the bad faith basis exceeded the jurisdiction of the Trademark Office.

The company also stated that obtaining a decision regarding the oppositions it had filed in administrative proceedings against the trademark applications would take time, and that this would hinder the registration of Terrawind’s trademarks and the exercise of its rights in Argentina.

The first instance court decided that it had no jurisdiction to review the case and ordered to dismiss it.

Terrawind appealed the decision. However, Division I of the Federal Court of Appeals in Civil and Commercial Matters upheld the first instance decision, referring to the opinion of the State Attorney, who considered that the case did not involve the cancellation action of a registered trademark but of a trademark application whose registration is pending.

The Court of Appeals established, as a principle, that only trademark registrations can be subject to a cancellation action and held that Terrawind’s cancellation action was premature.