Protection of Foreign Trademarks and the Duty to Know

In the case “School of Rock LLC v. Carrizo, Martín Abel” (Case 5685/2024), Division II of the Federal Court of Appeals in Civil and Commercial Matters overturned the Trademark Office’s decision that had rejected the opposition filed by School of Rock, LLC against the trademark application for MARTIN CARRIZO SCHOOL OF ROCK AND ARTS, intended to cover all services in Class 41. 

The plaintiff based its opposition on the grounds that the applied-for sign was almost identical to its SCHOOL OF ROCK trademark, registered abroad, with pending applications in Argentina. Carrizo failed to respond to the opposition in the administrative proceedings. 

The TMO rejected School of Rock’s opposition, holding that the applicant’s failure to reply did not imply a lack of interest in pursuing the trademark registration. The TMO further determined that the opponent’s mark did not reach the level of notoriety required and, consequently, found no evidence of bad faith on Carrizo’s part when filing the application. School of Rock appealed the TMO’s decision before the Federal Court of Appeals.

The appellate court analyzed the case and first noted that the applicant’s failure to respond revealed a lack of legitimate interest in the application.

Moreover, although the court recognized that the notoriety and international recognition of the SCHOOL OF ROCK trademark had not been sufficiently proven, it held that Carrizo could not claim ignorance of the prior existence of his competitor’s sign abroad, given the evolution and widespread availability of modern means of communication.

The Federal Court also emphasized that the expression SCHOOL OF ROCK plays a dominant role within the applied-for mark—as its mot vedette—and that its inclusion as a foreign term to identify services offered in Argentina was unjustified.

Finally, the appellate court held that the protection of a foreign trademark does not violate the principle of territoriality when the general interest of consumers and traders prevails over attempts to misappropriate trademarks in ways that breach the ethical rules of fairness and good faith. Consequently, the court overturned the TMO’s decision and declared the opposition filed by School of Rock well-founded.