The Federal Civil and Commercial Court of Appeals (Division II), rejected the appeal filed by PepsiCo Inc. and upheld the resolution of the Argentine National Institute of Industrial Property (INPI), which had declared its oppositions against Grupo Bimbo’s application to register “FRITOSTITOS” in classes 29 and 30 to be unfounded. PepsiCo claimed that the new sign fully included its well-known trademark “TOSTITOS”, creating a latent risk of direct or indirect confusion for the average consumer.
The court analyzed the dispute from the three levels of trademark comparison and concluded that the prefix “FRI-” provides sufficient visual, phonetic and conceptual distinctiveness. In addition, the judges recalled that both names are built on words commonly used in the food industry, with roots linked to “fried” and “toasted.” When adopting marks of a “weak” nature or based on descriptive elements, their holders are required to tolerate coexistence with similar signs that have a differentiating nuance.
A key aspect of the ruling addressed PepsiCo’s prior position, since years earlier it had argued before the INPI that both signs were not confusingly similar in order to obtain the granting of its own trademark. Although the Court acknowledged that companies have the right to change their commercial opinion or legal strategy depending on the evolution of their market position, it emphasized that whoever invokes possible confusion bears the burden of proving actual harm or a real risk of deception, which was not established in the case.
In the food industry, the inclusion of descriptive or commonly used terms requires trademarks to coexist with competitors using similar structures. Varying the prefix and providing a clear conceptual evocation is sufficient to guarantee that the marks are not confusingly similar and to preserve the offer of competitive products in the market.
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