Press and Social Media

Trademarks: when the key factor is in the details.

• April, 2016

When they think about looking after their trademarks, the first idea that comes to any entrepreneur's mind is some kind of protection against new trademark applications that can be confusingly similar to their own. They also think in the protection against imitations or falsifications. Argentina has a wide experience in the fight against trademark piracy: the first cases date back to the beginnings of the Twentieth Century.

In this fight, there are some milestones that marked the way, setting the course to follow and establishing the rights of each party. In effect, even though our country is ruled by the attributive principle -i.e. the owner of a trademark is he who has it registered in his name-, the trademark will ultimately belong to one who proves a better right over it.

The main message that we wish to lay out here is that the identity of a company, its image, its “personality”, is a fundamental pillar to develop and differentiate itself from its competitors. To achieve success, trademarks should go thru different stages or cycles of life and maturation that require a specific care for its permanent evolution and final acknowledgment. Since its creation itself, and then after going through its registration, protection and management, a trademark is the most valuable and intangible asset a company may have.

The care of a trademark begins in its creation, when they were the fruit of the imagination, ingenuity and vision of the creative. Choosing the sign that will be used and protect will depend not only upon commercial, marketing factors and upon the consumers to whom the product or service will be intended, but also on its registrability. Choosing wrong at this stage would mean to delay the launch or to fail to intensify the use of the mark until any issue is solved (or even to cancel the project). An analysis of the existence of prior marks, coexistence, identify risks and hypothesis of disputes should be made.

Susana and a forged signature

Precisely, in this respect ,we can mention one of the most outstanding cases handled by our Law Firm. Lets go back, for a moment, to the decade of 1990. Even then, Susana Giménez was a magnet for the public, who loyally followed and continues to follow her through the years. Many remember this case as one of the most analyzed in the field of trademarks and intellectual property law, because a celebrity was involved and it was extensively covered by the media. Lets see how the facts were developed, step by step.

It was 1993 when the producer Ovidio García brought a lawsuit against Telefe, where he claimed rights over the title of the program “Hola Susana”, which until then was hosted by Susana Giménez in channel 9. The change of broadcasting station and producer caused the dispute. First and second instances judgements in that court action sentenced Telefe to pay 20 million US Dollars in damages, interests and court costs. Other Law Firms had handled the case in both instances. However, further analyzing the case and taking into account that, sometimes, a detail is what causes a turn of 180 degrees, we offered our collaboration to the company.

On the one hand, we put our minds to outlining a judicial strategy that could postpone, minimize or counteract the effects of the judgements. On the other, we examined all types of files, proceedings and papers in the administrative and judicial proceedings of the case. The objective was clear: to tip the balance in favor of Telefe. With that in mind, and on the basis that the title “Hola Susana” was related to Susana Giménez, and that Telefe and García were under litigation for something that, ultimately, did not belong to either, we proposed that Susana Giménez should bring a court action for the recovery of the rights against García. Therefore, we designed a procedural strategy so that the effects of the judgements were suspended until this issue was solved.

Once the strategy was approved and having it been put in motion, everything was suddenly held in stand by. In effect, one morning, while reviewing two trademark files opened before us, we noticed one signature that was the usual one for Ovidio García and another that was, apparently, a forgery. Moreover, the latter was affixed in one of the files that grounded the lawsuit and the judgements passed against Telefe! That is to say, one of the files held within a piece of information that allowed us to reverse the situation. One of the key signatures was different, apocryphal, false and decisive in a lawsuit of these characteristics. Upon this discovery, the proceeding became a scandal: experts opinion, appearances of Susana Giménez at the National Board of Industrial Property (INPI) and several comings and goings in order to reach an agreement. The channel chose to seek an agreed way out of the dispute because, as at the time Telefe was in the process of selling its share capital, its shareholders preferred to enter into an agreement with García, although with economic conditions substantially lower and different from those arising from the judgements. In other words, a forged signature turned the act nonexistent and made the applications void. As a conclusion, it may be said that, sometimes the key to success is a unique detail, that is in plain sight but difficult to detect with a single look. A little but essential detail, that was overlooked at the beginning, that minimized the effect of a judgement worth millions.

Other situations

/p>This leading case has been a huge learning experience for every member of our Law Firm, but it was not the only one that made case-law. It also happened with Freddo, where we had to defend the ownership of the domain name “freddo.com.ar” because a third party had registered it a few months before at NIC Argentina.

Furthermore, perhaps few people are aware that the color combination of “blue and yellow” of Boca Junior's shirt is a registered trademark and legally protected. The situation was different in 1996, when Boca faced significant piracy acts over its emblem, due to a big piracy market of sporting outfits and accessories of the club. This decision, also historic, set a new precedent as to the possibility of registering the combination of colors applied to sporting equipment, uniforms and work clothing as trademark.

Also instructive was the protection of non-traditional marks, where we obtained the registration of the first sound mark for Intel. Or the protection as a trademark of a generic designation, for its design or special form of presentation, as the case of Diet was. With all of these cases, we continued learning and expanding our horizon, when investing in the protection of trademark rights, which represent a capital identical to a building, a vehicle, a store or any other kind of assets.

New challenges are ahead. Our country should make the decision of applying our current valid laws and take the necessary actions to fight against intellectual rights piracy. The existence of illegal fairs, street sales, the profusion of “manteros” (unregistered peddlers on the streets) are a stigma that drives off the possibilities of investments. Besides, fighting piracy also means fighting slave work, and favoring tax collection and fair competition.

The future

3D printing makes us face a reality that was seen as science fiction, farfetched, almost utopic. But it is already before our eyes and it will cause the search for balance between the benefits of an unprecedented technological advance and the increase in trademark, patent and intellectual rights piracy. It will also have effects in other areas such as Customs, Pubic Health, Taxes, Road and Industrial Safety, in view of the spare parts of machines, cars and other elements that could be manufactured without any quality control.

Nevertheless, whereas these challenges start to appear, we should bear in mind the struggle that is being carried out. On the one hand, we have forgeries, unlawful use, unfair competition and bad faith in business. On the other, we have creativity, innovation and ingenuity. As every day our brains create, have ideas, project and plan, there are also other individuals that seek to take advantage and profit from the prestige of others. What better strategy is there than being prepared? A registered trademark is a protected and sheltered right. Thus, if even then, others try to damage us, we will have the necessary resources to defend ourselves.

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Field: Intellectual property dispute

Issue: Dispute involving a lawsuit for 20 million US Dollars

Result: Due to a careful examination of the files, a serious and decisive fact was discovered that turn the whole process void.

SENA & BERTON MORENO was founded in 1937 by ALFREDO SENA and ERNESTO E. BERTON MORENO as a Patent and Trademarks Agency with a stable staff of only four people. Since then, the Firm has grown to reach its current size of forty people, working at our offices located only two blocks away from the Government House and at the heart of the commercial and financial district of the city. Ver más