In September 2026, the Federal Civil and Commercial Court upheld a ruling by the Argentine National Institute of Industrial Property (INPI) that had found merit in the oppositions filed by the Asociación Civil de Estudios Superiores (ACES), the founder of “Universidad Austral”, against the applications for mixed trademarks filed by Editorial Planeta S.A. that incorporated the word “AUSTRAL” as a central word element. The applications sought to protect publications, magazines, and books (class 16) as well as publishing services, book publishing, seminars, training, and cultural activities (class 41). The case highlights the tension surrounding the scope of an apparently generic term when an institution demonstrates intensive and well-established use.
ACES argued that the trademarks applied for were identical or confusingly similar to names such as “UNIVERSIDAD AUSTRAL”, “PARQUE EMPRESARIAL AUSTRAL”, and “AUSTRAL SALUD”, and that the goods and services in classes 16 and 41 coincided with its educational and publishing activities. It invoked a risk of confusion, free-riding on another’s reputation, and dilution of its institutional reputation. Editorial Planeta answered that “AUSTRAL” was a weak and widely used term, present in numerous third-party registrations, and that its publishing activities differed substantially from its educational activities. It added that the mark applied for had its own figurative presentation and that it held registrations for the sign in Mexico and Spain.
The Court rejected Planeta’s objections. It found that the exact reproduction of “AUSTRAL” as the central word element created a substantial similarity on both the phonetic and conceptual levels, and that the graphic elements of the applied-for mixed trademark were insufficient to neutralize it. It found that ACES had demonstrated effective and intensive use of its marks in educational, institutional, and publishing contexts and that there was an objective relationship between the goods and services in both classes. Regarding the alleged weakness of the term, the court clarified that the mere existence of third-party registrations does not justify disregarding a specific comparison between the conflicting signs. The international registrations invoked by Planeta were dismissed under the principle of territoriality.
The ruling offers a practical lesson: a commonly used term can acquire distinctive character when an institution demonstrates intensive and sustained use in a specific sector. The existence of multiple registrations for the same word does not guarantee that any new application will be successful. For those seeking to register trademarks that incorporate widely used terms, the case serves as a reminder that the analysis will always be case-by-case: what matters are the signs actually in conflict, the goods and services involved, and the actual use substantiated by the opponent. When does a generic term cease to be generic?
