Outstanding Cases - Vail Case

Vail Case, 1997

In 1997, S&BM obtained the issuance of the first sentence granting the recovery of a trademark.
It was the VAIL case (“Vail Associates Inc. vs. Renaver S.R.L. in re recovery of trademark with a supplementary request for nullity”, where the recovery of the marks “Vail” & Design, Nos. 1,248,159 and 1,248,160, in Int’l classes 28 and 25, which had been registered by a third party without the authorization of the renowned winter sports center, was sustained.

This judgment constituted one more step forward in the fight against trademark piracy in which Argentina has excelled not only due to its legislation but also due to the issuance of important judgments annulling trademark registered and in use for being a copy of foreign ones.

With a recovery action, the claiming owner is placed in the same situation as the appropriator, and thus in a better position as to the registration and with the same seniority the mark had, surpassing the effects of a nullity action. A nullity action extinguishes the registration. The recovery keeps it valid and makes it part of its rightful owner property, maintaining its registration data, seniority, oppositions that the pirate may have filed against confusing similar marks of third parties based on it that could have been earlier of any application of its owner.

Because the decision was an Appellate Court ruling revoking the judgment of a first instance judge that had not sustained the recovery but granted the nullity of the registration, because it was the first ruling in the Argentine Republic sustaining this kind of actions in trademark-related matters and because it was a new breakthrough in the fight against piracy, this ruling became a “leading case” in the field.