Trademark Use and Evidence: Keys to a Successful Claim

Assist-Card Argentina S.A. opposed the trademark application “ASSIST-MED (design)” in class 36filed by Tije SA. Following the opposition, Tije filed a complaint against Assist-Card seeking the dismissal of the opposition. Assist Med SRL, as assignee of the trademark application, ratified the complaint. In turn, Assist-Card counterclaimed seeking that the plaintiff be ordered to stop using the trademark “ASSIST-MED”.

 

Tije argued before the court of first instance that the defendant’s “ASSIST-CARD” trademarks –invoked as a basis of the opposition– had expired and objected the legitimate interest of the defendant. Responding to this, Assist-Card invoked the continued and intensive use of “ASSIST-CARD” as a trade name and as de facto trademark for over forty years, as well as its worldwide leading position in travel assistance services.

 

On October 7, 2021, the court of first instance rejected Tije’s complaint, ratified by Assist-Med, and admitted the counterclaim filed by Assist-Card.

 

On December 27, 2022, Division III of the Federal Court of Appeals in Civil and Commercial Matters upheld the first instance decision.

 

The appellate court pointed out that the expiration of Assist-Card's trademarks did not affect its clear legitimate interest in defending its de facto trademarks. The court stated that it was possible to object to a new trademark application even if the trademark used as basis of the opposition had expired, provided that its owner "has continued to intensively use that registration and created goodwill, since the prestige of a trademark linked to its previous owner is what deserves protection; prestige that does not merely derive from an extinct registration but from the use of the distinctive sign". The court factored in the evidence produced during the proceedings, particularly marketing survey that showed Assist-Card’s position as market leader, its turnover and sales.

 

When analyzing the confusing similarity of the trademarks in conflict, the appellate court:

 

• noted that the word "ASSIST" is not of common use in class 36 and that, even if it could be considered a commonly used term, the terminations “MED” and “CARD” are too close,

 

• considered there are sufficient elements to conclude that the trademarks "ASSIST-MED" and "ASSIST-CARD" are confusingly similar in all three aspects of the trademark similarity contest. In this sense, the court emphasized that from an ideological viewpoint, both trademarks refer to the concept of "assistance" –easily understood by the average consumer, even if unfamiliar with the foreign language– and that this increased the similarity between them.

 

Finally, the court also weighed in the fact that Tije’s brochures produced as evidence had the same colors as Assist-Card, and the remarkable similarity between the websites of both companies.