In a suit to dismiss a notice of opposition, the plaintiffs
learned the hard way the need for consistency, when the court
rejected their claim because it contradicted their own stance in
the inverse situation.
On November 10, 2011, in the case "Anton, Rodolfo
José et al v. Bodega Norton S.A.", Division 1 of
the National Court of Appeals on Federal Civil and Commercial
Matters reversed the district court's verdict and rejected
the lawsuit where plaintiff sought to dismiss the
defendant's opposition against trademark application
"D'ANTON" in Class 35. The basis for the
opposition had been defendant's trademark
"DALTON" registered in the same class.
To so decide the Court of Appeals took into account three facts:
all marks involved belonged to the same class; the marks
("D'ANTON" and "DALTON") were very
similar; and the plaintiff's prior acts were inconsistent
with its current stance.
Regarding this last issue, the Court especially pointed out that
shortly before applying for the registration of trademark
"D'ANTON" one of the joint plaintiffs, Ms.
Cecilia Rodríguez, had opposed an application for trademark
"DALTON" by Bodega Norton in Class 43 arguing likelihood
of confusion with trademarks "R.J. ANTON",
"D'ANTON COIFFEUR" y "D'AMTOM"
in Class 42. The Court therefore held that the plaintiff was now
barred by estoppel as it had argued before that the marks
were confusingly similar. Consequently, on the grounds of good
faith and the necessary consistence of social conduct in civil and
commercial activities, it concluded that the plaintiff had to bear
in full the consequence of its own conduct and rejected the suit to
have the opposition declared groundless.
This decision highlights the need to examine the
opposer's prior acts before filing a notice of
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In accordance with the Mexican
Patent and Trademark Law in Mexico, in order to maintain patent,
industrial design, and utility model registrations in force through
their life terms, the payment of maintenance fees is necessary.
Under the Mexican Trademark Law there is no obligation to use a trademark until renewal time is reached in the 10th year as of the filing date of the registration to be renewed and when filing the application for renewal it is only necessary to declare under oath that the mark has been used during a term of the last three years.
As a result of the entry into force of the Agreement on
Trade-Related Aspects of Intellectual Property Rights
(TRIPS) within the framework of the World
Trade Organization (WTO) in 1995, Argentina began to amend its
legislation on enforcement of intellectual property rights (IPR) in
order to adapt them to the standards therein contained.
The subject matter of this short article is related to the fact that during the patent specialists course I was able to acquire a better overview on how infringement by equivalence is applied in other countries, mainly, in Japan.
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