Nicolás O’Farrell
Partner at Apellaniz & O’Farrell
http://www.deapellaniz.com.ar/
Gloria S.A. filed trademark applications for “LINDA SUIZA” (which can be translated both as “Beautiful Switzerland” or “Beautiful swiss woman) to cover “milk, yoghurt, cheese and milk products” in class 29 as well as “mineral waters, aerated waters and other non alcoholic beverages; fruit beverages and fruit juices, syrups and other preparations for making beverages” in int. class 32.
The Embassy of Switzerland in Argentina opposed both applications on the basis of Section 3 d) of Argentine Trademark Law, which establishes that “the following may not be registered… trademarks that are liable to lead to error as to the nature, properties, merit, quality, manufacturing, methods, purpose, origin, price or other characteristics of the products or services that they are intended to distinguish” and Section 3 g) “…letters, words, names or distinctive signs that are used by foreign nations and international bodies recognized by the Argentine Governement”.
In addition, the opposition was grounded on the provisions of Section 1 a) of Art. 6 Ter of the Paris Convention “…The countries of the Union agree to refuse or to invalidate the registration, and to prohibit by appropriate measures the use, without authorization by the competent authorities, either as trademarks or as elements of trademarks, of armorial bearings, flags, and other State emblems, of the countries of the Union, official signs and hallmarks indicating control and warranty adopted by them, and any imitation from a heraldic point of view”.
On August 23, 2013 Division I of the Federal Court of Appeals in “Gloria S.A. v. Embajada de Suiza en la Argentina”, revoked the First Instance Court ruling and declared as well founded the oppositions lodged by the Embassy of Switzerland in Argentina to the trademark application for “LINDA SUIZA” in int. classes 29 and 32.
The Appeal Court held that it was clear that the purpose of Section 3 g) of the Argentine Trademark Law was to prohibit the registration of names of foreign countries.
Further, the Appeal Court took into consideration that the Ministry of Foreign Affairs informed that the official name given to the Swiss Confederation was “SUIZA”.
Likewise, the Appeal Court reasoned that even though the applied marks were not “SUIZA” but “LINDA SUIZA” and despite that the general rule is to examine the marks as a whole, in certain cases, such as this one, it was necessary to focus on the “mot vedette” of the mark which was “SUIZA”.
In addition, the Appellate Court pointed out that the defendant failed to explain why it had chosen the mark “LINDA SUIZA” to identify the mentioned goods in classes 29 and 32.
In conclusion, the Appelate Court rejected the trademark applications for “LINDA SUIZA” in classes 29 and 32.
At this point, it is worth to mention that Argentina has received a huge european immigration, specially since the nineteenth century (mostly from Spain and Italy) so it is easy and quite common to find in this country names of streets, cities, surnames, parks, clubs and restaurants that consist of or refer to european names, surnames or locations in Europe. For said reason, there is a great number of registered trademarks that contain european country names. For example, “ITALIA EN CASA”, “IG ITALIA GOURMET”, “BELLA ITALIA”, “PRONTO ITALIA”, “EMPORIO ITALIA”, “PIZZERIA ITALIA LOMOS Y EMPANADAS”, “YO, ESPAÑA”, “PLAZA ESPAÑA”, “BAJADA ESPAÑA” and “HELADOS ESPAÑA” among many others.
Therefore, in my opinion, most argentine citizens would not be misled as to the source by trademarks that contain the name of a european country. Yet, the Division I of the Federal Court of Appeals found its way to reject “LINDA SUIZA” for goods in classes 29 and 32.
This case is of interest for foreign companies that wish to apply trademarks in Argentina including the name of a country as well as flags or other official signs or hallmarks.
© Nicolás O’Farrell
Nicolás O’Farrell, partner at Apellaniz & O’Farrell. He graduated as a lawyer at the Argentine Catholic University. He is a Registered Patent and Trademark Agent. Member of the Argentine Industrial Property Agent Association (AAAPI) and International Trademark Association (INTA). He has a postgradute course on Copyright and Related Rights from the Universiy of Buenos Aires. He performed a training course at WIPO in connection with Domain Name Dispute Resolutions and Arbitration. He is a guest teacher at the University of Buenos Aires, Argentine Catholic University and Flacso. He is specialized in IP Law and advises national and foreign companies in relation with all IP matters and he has a broad experience in litigation before the Federal Courts.
