Outstanding Cases - Boca Juniors Case

Boca Juniors Case

In the 90’s, Boca Juniors faced several cases of piracy. No actions could be pursued against the infringers because they commercialized t-shirts without any name or emblem belonging to the Club that were registered as trademark.
Boca thus filed for the registration of the combination of colors applied to the t-shirt, shorts and socks, making clear that no privileges were claimed over the shape of the goods but only the combination of colors applied on them. In 1996, the Federal Appellate Court had the chance of construing the scope of section 1 of Act No. 22,362, when it establishes that “the combination of colors applied on a specific place of the goods or their packaging” can be registered as trademarks. This interpretation laid the criterion setting forth that what is essential is whether the combination of colors has distinctive capacity or not, regardless of whether it is placed or covers the whole of the good or packaging or only a part of them. Thereby, the Court declared the combination of colors blue and yellow (gold) applied on Boca Juniors’ t-shirts, shorts and socks registrable, for having the required distinguishing capacity. This way, the owner was granted a powerful tool for pursing appropriators and, which is no less important, it was validated the possibility of protecting an important element of “trade dress” or “commercial style” as a trademark, that earlier decisions of the Trademarks Office had questioned.

After this ruling, it became usual for sport entities, private schools and companies of different fields to register their combination of colors applied to the apparel, uniforms and workwear.

Court-file 11.772/94 “Club Atlético Boca Juniors Asociación Civil vs. Division of Technology, Quality and Industrial Property in re rejection of trademark registration”, National Court of Appeals in Federal Civil and Commercial matters II, July 4, 1996.