Watch Out Compulsive Protection of Defense Trademarks!
Are well-known TMs registered, as a way of defense, in other classes than the ones covering the products / services for which they are known, stronger than fresh TM applications legitimately filed in said other classes?
TM jurisprudence. Defense trademarks. Recent Court case
Case: Campagnolo SRL vs Benvenuto SACEeI re:cease of opposition to TM application CAMPAGNOLO in class 25 on the basis of LA CAMPAGNOLA.
On April 16th last, Room II of the Federal Civil and Commercial Appellate Court, issued decision rejecting the opposition.
Applicant: Famous Italian company, leader in production and distribution of high quality components of racing bicycles, applied for label TM application CAMPAGNOLO, identical to its corporate name, in class 25.
Opposing party: Important company manufacturer of food products, opposed against said application on the basis of TMS LA CAMPAGNOLA and CAMPAGNOLA, registered in the same class.
The plaintiff (applicant) limited its application to: “sport clothes and free-time clothes, all of these articles for sport activity and sold in specialized commercialization channel”.
This trademark had already been used in Argentina for these items. The signs already coexisted in class 12 (of main interest for the applicant).
The first-instance Judge accepted the complaint since the parties to the court action have traditionally and widely-known, developed and carried very different types of commercialization, selling articles having highly diverse applications and prices. It was also highlighted that LA CAMPAGNOLA in class 25 constitutes a defense trademark, which leads to a more benevolent criteria at the time of deciding.
The defendant appealed said decision.
The Appellate Court evaluated (among other issues) that:
- the nature of the merchandise commercialized by the opponent “… has never been used for identifying… products other tan food…”
- “… it’s not capricious to attribute trademark LA CAMPAGNOLA the characteristic of… famous… it is neither illogical to admit that said fame is directly related to a certain range of articles… fame is a fact at the reach of everyone… and does not require a specific evidence.
- The plaintiff “… has large data in the manufacture of bicycles and accessories thereto… continuing functioning intensely under the direction of the famous cyclist Tulio Campagnolo…”
- “… in the same class 12… since 1994… the trademarks today in conflict, coexist peacefully..”
- “… for many years… it has always been seen that LA CAMPAGNOLA distinguishes certain type of food and never any other type of article such as a TV or a bicycle!…”
The considerations borne in mind by the Judge show an impeccable analysis of this case which reflects interesting tinges of the principle of the thorough protection which is credited to famous TMs to avoid dilution, teaching that said principle must be sustained reasonably and not obsessively.
As it can be seen, on weighting on one side, the fame of the TM on which the opposition is grounded (LA CAMPAGNOLA) and on the other, the facts that
- Said fame is restricted to a range of specific products;
- he applicant of CAMPAGNOLO is acting on good faith and its products are not similar or related to those protected by the famous TM;
- The TMs in conflict coexist peacefully in other classes, the latter facts have been considered more relevant at the moment of reaching a decision.
A famous TM can not be used to refrain parties acting in good faith from obtaining registration of similar TMs that can not possibly cause confusion or mean a risk, for protecting other kind of products / services and when the activities of the parties involved are not possibly related.
Author: Ms. Maria Elena Perez, Head of Moeller’s Legal Department, Lawyer specialized in IP.
Translated by Ms. Paola Corigliano, Senior TM Paralegal at Moeller’s TM Department and English Certified Translator
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