In a ruling dated June 12, 2017, in re "Vignes Des Andes S.A. c/ Grupo Peñaflor s/ Cese de oposición al registro de marca" ("Vignes Des and S.A. vs Grupo Peñaflor on cease of opposition to trademark registration"), Division II of the Federal Court of Appeals on Civil and Commercial Matters upheld the decision issued by the court of the first instance through which the motion submitted by Grupo Peñaflor against the application for the trademark " VIGNES DES ANDES" Serial Nº 3.046.049 in class 33 (which mainly includes wines and other alcoholic beverages) based on the registries "AV ADEAN VIÑAS", "ANDEAN VIÑAS" and "ANDEAN VINEYARDS" registered in the same class, was declared ill founded.
Like the judge of the first instance, the Court of Appeals sustained the distinctiveness between the signs.
The judge of the first instance had primarily based his ruling on the status of word of common use of the above mentioned element "ANDE" in class 33, and had considered that, even when the signs "VIGNES DES ANDES" and "ANDEAN VINEYARDS" had the same meaning in French and English, respectively, due to the fact that the former was not as widespread as the latter, such terms should be considered as "practically a fanciful expression". Lastly, the possibility of coexistence had also been justified by the differences added by the graphic element in the trademark "VIGNES DES ANDES".
Grupo Peñaflor appealed against this decision pleading that, among other arguments, the comparison performed by the court of the first instance had not taken the trademarks as a whole without making dismemberments, but it had segmented the signs, making focus only in the term "ANDE" and its status of word of common use in the class. In addition, the company stated that the ruling was inconsistent since it had recognized the identical conceptual meaning between the signs, and however, it had declared their distinctiveness. The appellant also affirmed that the graphic elements of the signs were mistakable, since both included representations of mountains.
The Court of Appeals decided to uphold the ruling of the first instance, declaring the distinctiveness of the trademarks at issue. The grounds to issue this decision were similar to those of the appealed ruling, highlighting that the registry of Grupo Peñaflor included the element of common use ANDE, and affirming that the fact that one word of common use is part of the registry, even if it prevents the monopolization of its use, it does not prevent its registration by itself. The ruling of the Court of Appeals also states that Grupo Peñaflor should assume the consequences of using a general term in the trademarks it owns, a decision of its own entailing that said term shall coexist with previous and subsequent trademarks that contain the same term of common use1, adding as well that the products differentiated by the trademarks under analysis were not aimed at the public in general, but at a certain sector in particular (consumers of alcoholic beverages), being this sector a qualified public which has special care in the purchase of said products, being the possibility of confusion less likely.
It is important to highlight the way in which both the first instance judge and the Court of Appeals have made the comparison of the signs focusing on the term "ANDE" rather than on the trademark as a whole.
In our opinion, even though the term ANDE is considered as a common use term in its class, the ruling does not consider as a whole the closeness and conceptual similarity that the whole trademarks project even in English and in French and the importance that this item of the comparison usually has. Likewise, we do not share that for the public of the class under analysis the trademark "VIGNES DES ANDES" in French, with such a clear meaning, could be considered as "practically a fantasy expression" in Spanish.
I. We finally highlight that the commented ruling mentions as essential principles in the matter the following ones: "1- That the similarities rather than the differences shall be considered regarding the registrations at issue; 2- That it is enough for the similarity to occur in one of the three comparison criteria -graphic, phonetic or conceptual- to justify the prohibition of coexistence; 3- That the value of the impression left by signs in pre-reflexive perception is well known in this matter"2. However, in this decision, there seems to be a different approach that could lead to weaken good commercial and consumer protection practices, which traditionally are part of the core of the trademark system.
1. The highlighting in italic is ours.
2. The highlighting in bold is ours.
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