In a suit to dismiss a notice of opposition, the plaintiffs learned the hard way the need for consistency, when the court rejected their claim because it contradicted their own stance in the inverse situation.
On November 10, 2011, in the case "Anton, Rodolfo José et al v. Bodega Norton S.A.", Division 1 of the National Court of Appeals on Federal Civil and Commercial Matters reversed the district court's verdict and rejected the lawsuit where plaintiff sought to dismiss the defendant's opposition against trademark application "D'ANTON" in Class 35. The basis for the opposition had been defendant's trademark "DALTON" registered in the same class.
To so decide the Court of Appeals took into account three facts: all marks involved belonged to the same class; the marks ("D'ANTON" and "DALTON") were very similar; and the plaintiff's prior acts were inconsistent with its current stance.
Regarding this last issue, the Court especially pointed out that shortly before applying for the registration of trademark "D'ANTON" one of the joint plaintiffs, Ms. Cecilia Rodríguez, had opposed an application for trademark "DALTON" by Bodega Norton in Class 43 arguing likelihood of confusion with trademarks "R.J. ANTON", "D'ANTON COIFFEUR" y "D'AMTOM" in Class 42. The Court therefore held that the plaintiff was now barred by estoppel as it had argued before that the marks were confusingly similar. Consequently, on the grounds of good faith and the necessary consistence of social conduct in civil and commercial activities, it concluded that the plaintiff had to bear in full the consequence of its own conduct and rejected the suit to have the opposition declared groundless.
This decision highlights the need to examine the opposer's prior acts before filing a notice of opposition.
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