Rejection of TM application despite co-existence agreement.
On April 11, 2011, the Second Chamber of the Court of Appeals on Civil and Commercial Federal Matters upheld the ruling of a lower court that had affirmed an administrative decision issued by the Argentine Patent and Trademark Office (INPI) rejecting a trademark application despite a coexistence agreement between the applicant and the owner of the mark cited by INPI as confusingly similar.
The facts of the case were that the German company MERZ + CO GMBH & CO filed in January 2001 a trademark application for the word mark “EBIXA” in class No. 5 limited to “drugs for the treatment of diseases of the central nervous system”, which was finally rejected by INPI in March 2004 citing the existence of the “confusingly similar” mark “ELVIXA” registered in the whole class No. 5.
In doing so, INPI’s decision did not give any deference to the co-existence agreement signed by the applicant and the owner of the cited registered mark who had withdrawn his opposition to the registration of the mark “EBIXA”.
Therefore, applicant started a judicial proceeding requesting the overturn of INPI’s decision, which was dismissed by the judge of the first and the tribunal of the second instance, all of whom supported INPI’s position.
The courts In this case noted that the marks could be used for distinguishing pharmaceutical products, which increase the likelihood of confusion when considering some aspects of the way those products are placed on the market and therefore also the hypothetical risks for consumers.
Conclusion: Since decades ago the ongoing administrative practice of INPI has been accepting and giving strong deference to co-existence agreements except in very narrow circumstances.