On November 10, 2011 Division 1 of the National Court of Appeals on Federal Civil and Commercial Matters confirmed the decision of the lower court in the case "Ediciones Proa y Alífaro, Roberto Francisco v. Fundación International Jorge Luis Borges y Kodama, María". Since Ediciones Proa and Fundación Internacional Jorge Luis Borges were held to have no standing to sue or be sued, Mr. Roberto Francisco Alífaro and Ms. María Kodama, remained as plaintiff and defendant, respectively.
The plaintiff, a contributor to the magazine "Proa" (third stage) (1982), requested the cancellation of the trademark "REVISTA PROA", registered in 2003 by Ms. Kodama in Class 16. He also asked that the defendant stop using said mark, and requested an award of damages.
The Court found that the Proa magazine ("Revista Proa"), started in 1922 by Jorge Luis Borges, was beyond doubt associated with this author. It also took into account that Ms. María Kodama is Borges' sole heir, being thus entitled to all of his intellectual property rights. The Court went on to say that although copyrights and industrial property rights are different legal spheres, they can interact and prior use of one of them may have an impact on the other which, in this particular case, worked in favor of defendant Kodama. The Court concluded that defendant's registration of the trademark "REVISTA PROA" did not constitute an infringement nor had been made in bad faith, and therefore rejected the cancellation claim and the injunction. Since no irregular act had been carried out, it also rejected Mr. Alífaro's claim for damages.
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