Division 2 of the National Court of Appeals on Federal Civil and Commercial Matters reversed the lower court's decision that had ordered Pepsico de Argentina to stop using trademark "NACHOS!" and admitted defendant's counterclaim requesting that said registration be cancelled.
Pepsico de Argentina used the expression "DORITOS NACHOS" to identify its seasoned corn tortilla chips. Cerealko S.A., owner of the trademark "NACHOS!" in International class 30, filed a lawsuit against Pepsico de Argentina seeking to enjoin such use. The appellate court stated that an expression may be considered as the usual designation of a product or service when it is so used in the ordinary language of the country's inhabitants, regardless of the criteria of Spanish language institutions and of its inclusion in language dictionaries. In this particular case, the word "NACHOS", originated in Mexico, had a specific meaning in Argentina that referred to "small triangular toasts made of cornmeal, originally from Mexico, which are usually eaten with diverse sauces". Therefore, the court considered that there was no legal impediment for Pepsico de Argentina to continue using such word jointly with its trademark "DORITOS".
The court also declared the trademark "NACHOS!" null and void on the basis that it was not proved that such term had become the usual designation of the product after plaintiff's application for "NACHOS!" was filed in 1999.
This decision was rendered on December 22, 2011 in re "Cerealko S.A. c/ Pepsico de Argentina S.R.L."
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
