Is There Distinctiveness in Cookies With Faces? A Verdict Sets the Limit
The Federal Civil and Commercial Court of Appeals (Division II), once again put a classic trademark law debate on the table: how far does the protection of a shape extend when it comes to common forms in a product?
In Docket Nos. 12611/2024 and 12757/2024 (“Bagley Argentina S.A. c/ Parnor S.A. s/ apelación de resolución administrativa”), the judges confirmed the decision of the Argentine National Institute of Industrial Property (INPI), which had rejected the opposition filed by Bagley against two three-dimensional trademarks applied for by Parnor for cookies.
Bagley argued that the trademarks applied for by Parnor (cookies with gesturing faces, eyes of different sizes, and a tongue sticking out) could be confused with its well-known “Sonrisas” cookies, whose design also features a face engraved on the surface. According to the company, the notoriety of its mark and the characteristic design of these cookies deserved broad protection against imitations. The dispute revolved around several figurative registrations owned by Bagley and two three-dimensional trademarks applied for by Parnor for products in class 30.
The court held that, from the perspective of the average consumer, the differences between the signs are sufficient to avoid confusion. For the judges, the overall impression created by the designs is different, meaning they can coexist in the market without misleading the public.
The decision also reinforces a key idea in the subject: it is not possible to monopolize generic or common elements of a product, such as a round cookie with a face. Trademark protection extends to the distinctive characteristics of the design, but not to the general idea. Even the alleged notoriety of the “Sonrisas” mark was not sufficient to block registrations that, taken as a whole, are distinguishable.
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