The Federal Civil and Commercial Court of Appeals (Division II) upheld the Argentine National Institute of Industrial Property (INPI) resolution that declared unfounded the opposition filed by Despegar against the application for the mixed trademark “VIVIR VIAJANDO (& Design)” in Class 39. Despegar argued that the expression was a descriptive advertising phrase commonly used in the tourism industry, and that the applicant company lacked a legitimate interest to monopolize it.
The court rejected the grievances, recalling that trademark analysis must be carried out as a whole and without arbitrarily fragmenting the sign. The judges emphasized that the application did not seek to protect the isolated text, but rather the mixed mark as a whole, including its isotype and specific typography. Under that premise, mixed marks must be used in full and do not grant an exclusive right over the individual words that comprise them.
Likewise, the Court confirmed that Vivir Viajando S.A., holder of the trademark, proved a clear legitimate interest by previously holding the registration of the same design in Class 41 for tourism audiovisual programs. Extending protection to Class 39 constitutes a logical commercial development given the degree of direct connection between both sectors.
The combination of text and an original graphic design grants sufficient distinctive capacity to constitute a valid mixed mark, limiting exclusive protection to the complete visual whole.
Do you have questions about how to register mixed marks or defend yourself against oppositions before the Argentina Trademark Office (INPI)? Contact us at info@lermanszlak.com to receive specialized advice.
