ROCA PATRON and ROCA: Are they Similar? The Weight of Additional Circumstances

On December 13, 2022, in the case “Patron Spirits International AG v ROCA SA”, Chamber I of the Federal Civil and Commercial Court of Appeals in the City of Buenos Aires considered that the trademarks “ROCA PATRON” and “ROCA”, “ALFREDO ROCA” among others owned by ROCA SA are not confusingly similar.

The company Patron Spirits International AG filed an application to register “ROCA PATRON” and “ROCA PATRON” (and device) in international class 33. ROCA SA opposed to this application based on its marks ROCA (and device), ALFREDO ROCA, BARREL & ROCA, ALFREDO ROCA DEDICACIÓN FAMILIAR (and device), ALFREDO ROCA DEDICACIÓN PERSONAL, ALFREDO ROCA FINCAS (and device), ROCA ALFREDO ROCA (and device), ALFREDO ROCA 100 COSECHAS, and ROCA EXCLUSIVO, all registered under international class 33 and used in relation to wines.

Since there was no agreement, Patron Spirits filed a lawsuit requesting the opposition filed by Roca SA to be ceased. There, it claimed that Patron Spirits is an international company that produces and markets white spirits, liqueurs, and spirits; and that the word “PATRON” is the motto of its trademarks. In turn, ROCA SA stated it is a company with a national and family history that produces wines, and who owns a family of trademarks including the term ROCA. Besides, ROCA is its social and commercial name and its internet domain name.

The first instance court upheld Patron Spirit’s claim: the oppositions were declared unfounded on the grounds that there were sufficient differentiating elements between the trademarks.

Roca SA appealed this decision. The Court of Appeals confirmed the ruling based on the additional circumstances in the case: the Court considered that there is no overlap between the goods marketed by the parties since Patron Spirits is an international tequila company and Roca SA is a local winery dedicated to the wine market.

Further, the Court considered that the consumers of the products are very different. Roca SA has a very specific audience in the wine industry, who give special importance to the choice of wineries, “preferring to regularly consume their products because of the trust they place in the final result of their production.” Instead, Patron Spirits consumers look for spirits, liqueurs, tequila, rum, and whiskey; products that Roca SA does not market.

The Court also considered that:
 

1) the term “ROCA” is of common use within the class (although no third-party trademarks composed of this term were invoked) and, therefore, the comparison must be carried out with a reasonably benevolent criterion, to avoid a monopoly of an element not susceptible to monopoly;

2) the main term in the Patron Spirits trademarks is PATRON and ROCA is accessory;

3) when comparing the trademarks, the similarity that can be caused by sharing the term “ROCA” disappears with the addition of PATRON; and

4) the trademarks are part of two trademark families identifying with different terms: PATRON (on the one hand) and ROCA (on the other).

Therefore, the parties’ reputations in the markets of their respective specialties eliminates the possibilities of confusing the opposing trademarks.