Under Argentine Law, ownership of a trade mark and the right to the exclusive use thereof are acquired by registration in accordance with Article 4 of Law 22,362 which has adopted the attributive system. Consequently, in principle, if there is no registration of a trade mark, there is no right thereto.
However, the application of the attributive system is not so strict that it prevents marks in use, but unregistered, from being protected in exceptional cases.
Unregistered marks (or de facto trade marks) refer to signs which have the distinctive function of trade marks, but which have not been registered as such and do not infringe the rights of registered trade marks. This last requirement is essential because otherwise we would be referring to illegally used trade marks, the legal consequences of which differ remarkably from those of unregistered marks.
Judges have acknowledged protection to those who, though not having registered the sign, have long used it thus consolidating it in the market and creating goodwill.
In this regard, on March 14 2013, Division I of the Federal Court of Appeals in Civil and Commercial Matters, in the case Grupo Almar v Grupo Alimentario Carbiz on preliminary measures, revoked the first instance judge's ruling that rejected a preliminary injunction filed by the owner (Grupo Almar) of an unregistered mark and granted the requested preliminary injunction.
The first instance judge had held that Section 38 of the Trade Mark Law unambiguously requires that, for the granting of the preliminary injunction, the petitioner shall be the owner of a registered trade mark.
In its rationale, the Court of Appeals held that the principle used by the first instance judge is not absolute, taking into account that, under exceptional circumstances, the unregistered marks (in this case the sign Puddings and device), which have been intensely used and have thus created goodwill, may deserve some legal protection. Otherwise, the holder of an unregistered mark would remain unprotected against the illegitimate use of the same mark by a third party who would take advantage of others' reputation or goodwill.
The Court of Appeals took into account the receipts filed by the plaintiff, which provide evidence of the sale of products to two of the most important supermarkets in the country, using the sign Puddings and device, applied to puddings, at least for the past five years.
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