Argentina: The Court Of Appeals Stated That The Trademark "Vignes Des Andes" Is Not Confusingly Similar To "AV Andean Viñas", "Andean Viñas" And "Andean Vineyards"

Last Updated: 4 December 2017
Article by Patricio M. Albornoz and M. Florencia Bossi

In a ruling dated June 12, 2017, in re "Vignes Des Andes S.A. c/ Grupo Peñaflor s/ Cese de oposición al registro de marca" ("Vignes Des and S.A. vs Grupo Peñaflor on cease of opposition to trademark registration"), Division II of the Federal Court of Appeals on Civil and Commercial Matters upheld the decision issued by the court of the first instance through which the motion submitted by Grupo Peñaflor against the application for the trademark " VIGNES DES ANDES" Serial Nº 3.046.049 in class 33 (which mainly includes wines and other alcoholic beverages) based on the registries "AV ADEAN VIÑAS", "ANDEAN VIÑAS" and "ANDEAN VINEYARDS" registered in the same class, was declared ill founded.

Like the judge of the first instance, the Court of Appeals sustained the distinctiveness between the signs.

The judge of the first instance had primarily based his ruling on the status of word of common use of the above mentioned element "ANDE" in class 33, and had considered that, even when the signs "VIGNES DES ANDES" and "ANDEAN VINEYARDS" had the same meaning in French and English, respectively, due to the fact that the former was not as widespread as the latter, such terms should be considered as "practically a fanciful expression". Lastly, the possibility of coexistence had also been justified by the differences added by the graphic element in the trademark "VIGNES DES ANDES".

Grupo Peñaflor appealed against this decision pleading that, among other arguments, the comparison performed by the court of the first instance had not taken the trademarks as a whole without making dismemberments, but it had segmented the signs, making focus only in the term "ANDE" and its status of word of common use in the class. In addition, the company stated that the ruling was inconsistent since it had recognized the identical conceptual meaning between the signs, and however, it had declared their distinctiveness. The appellant also affirmed that the graphic elements of the signs were mistakable, since both included representations of mountains.

The Court of Appeals decided to uphold the ruling of the first instance, declaring the distinctiveness of the trademarks at issue. The grounds to issue this decision were similar to those of the appealed ruling, highlighting that the registry of Grupo Peñaflor included the element of common use ANDE, and affirming that the fact that one word of common use is part of the registry, even if it prevents the monopolization of its use, it does not prevent its registration by itself. The ruling of the Court of Appeals also states that Grupo Peñaflor should assume the consequences of using a general term in the trademarks it owns, a decision of its own entailing that said term shall coexist with previous and subsequent trademarks that contain the same term of common use1, adding as well that the products differentiated by the trademarks under analysis were not aimed at the public in general, but at a certain sector in particular (consumers of alcoholic beverages), being this sector a qualified public which has special care in the purchase of said products, being the possibility of confusion less likely.

It is important to highlight the way in which both the first instance judge and the Court of Appeals have made the comparison of the signs focusing on the term "ANDE" rather than on the trademark as a whole.

In our opinion, even though the term ANDE is considered as a common use term in its class, the ruling does not consider as a whole the closeness and conceptual similarity that the whole trademarks project even in English and in French and the importance that this item of the comparison usually has. Likewise, we do not share that for the public of the class under analysis the trademark "VIGNES DES ANDES" in French, with such a clear meaning, could be considered as "practically a fantasy expression" in Spanish.

I. We finally highlight that the commented ruling mentions as essential principles in the matter the following ones: "1- That the similarities rather than the differences shall be considered regarding the registrations at issue; 2- That it is enough for the similarity to occur in one of the three comparison criteria -graphic, phonetic or conceptual- to justify the prohibition of coexistence; 3- That the value of the impression left by signs in pre-reflexive perception is well known in this matter"2. However, in this decision, there seems to be a different approach that could lead to weaken good commercial and consumer protection practices, which traditionally are part of the core of the trademark system.


1. The highlighting in italic is ours.

2. The highlighting in bold is ours.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on

Click to Login as an existing user or Register so you can print this article.

Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Related Topics
Related Articles
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of

To Use you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions