Trademark Cancellation and Renewals

In the case “Nervi, Nicolás v. Del Sarto, Damián Walter et al” (Case 9488/2009), the plaintiff—Nicolas Nervi—filed a lawsuit against Walter Del Sarto, Adrian Gabriel Kemeny, and Oneill Tech SRL seeking:

1. to claim ownership of the trademark GRAVEDAD ZERO (Reg. 1759804) in class 25,
2. as an alternate petition, to claim the cancellation of the trademark,
3.  that the oppositions that Kemeny had filed against Nervi’s applications for trademark GRAVEDAD ZERO be declared groundless,
4. that use of the mark GRAVEDAD ZERO be discontinued,
5. a compensation for damages caused,
6. the publication of the ruling.

Although the first instance court rejected the claim against the co-defendant Del Sarto, it upheld the claim against Kemeny and Oneill Tech SRL, and declared the cancellation of the trademark GRAVEDAD ZERO, declared moot the claim related to the request that the oppositions filed by Kemeny be declared groundless, partially allowed the cease  of use, and ordered the payment of a compensation of ARS 60,000 in relation to the co-defendants Kemeny and Oneill Tech SRL. The court also ordered that the ruling be published at the cost of the infringers.

Nervi appealed the judgment. In his appeal, he argued that the cancellation of the trademark GRAVEDAD ZERO should be extended to its renewals, that it was an error to consider moot the motion for declaring the oppositions groundless, and requested that the cease of use and the damages awarded in the first instance ruling be extended to co-defendant Del Sarto.

Division III of the Federal Court of Appeals in Civil and Commercial Matters partially upheld the appeal in a ruling delivered on June 4, 2024. There, the Court of Appeals decided that the cancellation of the trademark also extends to its renewals. The Court also considered that the first instance court should have ruled on the plaintiff's claim that the oppositions were groundless and ordered that, as the trademark GRAVEDAD ZERO had been declared null, the oppositions of the co-defendant Kemeny lacked legal basis.

However, the Court upheld the rejection of the claim against the co-defendant Del Sarto. It understood that since Del Sarto had assigned the trademark rights to another owner, there was no basis for ordering him to stop using the mark. Regarding the second claim, it was decided that co-defendant Del Sarto had proven the lack of use of the trademark, and therefore was not liable for paying damages.