Outstanding Cases - Dyet Case

Dyet Case

Frequently, companies use designs or letter types that are original to graphically represent generic designations or words of common use.

These signs though usual in other countries, such as Brazil, were not so in Argentina, where they were not protected by themselves, but as part of a packaging, label or set of words, where their distinctive strength was lost.

S&BM had the opportunity to pose this issue judicially when defending the notion that it was legally possible to protect as a trademark a term phonetically non-registrable but distinctive and protectable due to the form of its representation.

An example of these signs is the designation “DYET”, (the letter “Y” is represented by the figure of a little man with its are wide open and the letters “D”, “E” and “T” with a special type font).

It was filed without claiming any rights over the designation considered by itself, but its special design, in classes 5, 29 and 30, and limited to protect dietetic products only. Opposed by third parties and rejected by the Trademark Office, the Courts finally declared it registrable, acknowledging the trademark capacity of its special design.

The mark faced more than 20 oppositions and three court actions.

This court decision enabled the registration of generic names for their special design and/or combination of colors applied to them, disclaiming any privilege over the word considered by itself.

Court-file 5315/93 "Canale S.A vs. Division of Technology, Quality and Industrial Property in re rejection of trademark registration”, November 14, 1996, National Court of Appeals in Federal Civil and Commercial matters III