The Federal Civil and Commercial Court of Appeals (Division II) upheld the resolution of the Argentine National Institute of Industrial Property (INPI) that declared the nullity of a design mark registration. The dispute arose when the heirs of the holder of the historic trademark “LA NEGRA” brought an action against the design mark registration of the competing company (Frigorífico La Morena SRL.) in Class 29, arguing a clear infringement of the principle of temporal priority and a direct risk of confusion among consumers.
Although Frigorífico La Morena argued that both trademarks had coexisted in the market for years without causing deception and that the figure of a woman is a common element in the food industry, the court dismissed its grievances. The judges emphasized that what was being assessed was not the presence of a generic female face, but rather the coincidence in highly specific visual features: the profile of an Afro woman with a large earring, a polka-dot headscarf, and a composition centered within a circle.
The ruling also clarified a crucial aspect of trademark law: the lack of a timely opposition at the time of registration by the holders of the earlier sign does not validate a confusingly similar trademark. Likewise, the Court recalled that the alleged coexistence invoked was not such, since the defendant’s prior registrations were only word marks (“Frigorífico La Morena”) and did not include the disputed design.
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