The Federal Civil and Commercial Court of Appeals (Division II) upheld the Argentine National Institute of Industrial Property (INPI) provision that declared unfounded the oppositions filed by the German multinational PUMA SE against the applications for registration of mixed trademark “EL PUMA (& Design)” (Classes 35 and 37) filed by an individual for an auto parts workshop and business. PUMA SE alleged a risk of confusion, dilution of its sign and the need to receive enhanced protection by virtue of the enormous notoriety of its brand.
The court based its ruling on the principle of specialty and on the marked differences in activity between the parties. While PUMA SE focuses on sports apparel and footwear, the applicant sells and installs exhaust pipes, bumpers and automotive accessories. The judges noted that consumers would not make any direct or indirect mistake as to the business origin of the products, since the commercial sphere and sales dynamics are completely dissimilar.
Paradoxically, the very fame of the German brand worked against it: the Court held that the notoriety of a sign operates as a strong distinguishing factor. The average consumer recognizes the identity of the sports brand with absolute clarity, making it even more unlikely that they would associate a neighborhood mechanic’s workshop with the international company. In addition, the requested design incorporates the graphic of an exhaust pipe, distancing it from any visual similarity with the famous leaping feline.
Our conclusion is that the notoriety of a trademark does not imply an absolute monopoly over a name in all market sectors. When commercial activities are distant and the graphic presentation differs, coexistence is legally viable without infringing intellectual property rights.
Do you have questions about how to protect your trademark or defend it against third-party oppositions? Write to us at info@lermanszlak.com to receive advice from our team.
