Signs Evoking Third Parties’ Trademarks
On September 23, 2010, in the case of “Club Atlético Boca Juniors Asociación Civil vs. Superblank SRL and other seeking the cease of use of trademarks”, Division I of the Federal Court of Appeals in Civil and Commercial Matters ordered the defendant to cease use of the trademarks owned by the plaintiff in all the means of identification, emblems, combination of colors blue and yellow, legends, and any other sign that was reproduced in the products manufactured and sold by the defendant.
The defendant used the blue and yellow combination on textile goods with designs related to soccer (stadiums, awards, players), promotion (key rings, labels, flags, shields) and advertising, and sold the products with flags and shields of the Boca Juniors soccer team. The plaintiff instituted a Court action seeking to enjoin the objected trademark use. Both the District Court and the Court of Appeals ruled in favor of the plaintiff.
The Court of Appeals determined the use of signs evoking the plaintiff’s trademarks on a great variety of products and that this situation produced an association between those products and the owner of the well-known registered trademarks, damaging the prestige of these trademarks. Accordingly, on the basis of sections 15 and 16.3 of the GATT TRIPs Agreement, along with its own case law, the Court enjoined the defendant from using the plaintiff’s trademarks.
The Court confirmed that the use of signs evoking third parties’ trademarks should be condemned when they produce an association between the questioned products and the owner of trademarks, thus damaging the prestige of someone else’s trademark.
This insight is a brief comment on legal news in Argentina; it does not purport to be an exhaustive analysis or to provide legal advice.