Intense Use and Clientele: What Evidence Is Necessary to Prove a De Facto Trademark?

On February 6, 2024, in the case “Spena, Luciano Rodolfo c/ Sidus S.A. S/ Cese de oposición al registro de marca” (7007/2015), the Federal Court of Appeals in Civil and Commercial Matters dismissed the appeal filed by Sidus SA and confirmed the first instance judgment. The first instance court had understood that the opposition filed against the application for the trademark NEOFOODS in international class 5, in the name of Luciano Rodolfo Spena, lacked grounds.

The Court of Appeals analyzed whether it was appropriate to apply the exceptional protection granted to de facto trademarks to the trademark BIOFOODS, on which the opposition was based.  BIOFOODS expired and was not renewed, but its owner invoked its “intense use” since 2012. The Court analyzed the evidence Sidus SA provided and considered that it was insufficient to support the existence of a de facto trademark.

Regarding the evidence, the Court further sustained:

1. Ex officio response:  Sidus should have provided details as to the regularity, volume, and economic importance of the alleged commercialization of the product, or the volume of sales. Likewise, it should have referred to the relevant the trademark, and that it is used in a product or service with trademark purposes.
    
2. Accounting reports: the expert should have had access to reliable information regarding the use of the trademark in the bookkeeping, including details of the sales volumes in units and other conclusive information of the use of such trademark.

The Court concluded that, by not complying with these standards, the evidence provided was not sufficient to prove the existence of BIOFOODS as a de facto trademark.