Mondelez Argentina S.A. and Teubal Trading Co. S.A. faced each other in court (“Mondelez Argentina S.A. c/ Teubal Trading Co S.A. s/ acción de reivindicación”) over the historic “1/2 HORA” candy trademark, a product with a strong presence in the Argentine market.
Since the late 1980s, the companies had maintained a contractual relationship that included a license and co-ownership of the trademark registration. For decades, Mondelez manufactured and commercialized the candies. However, when the registration expired in 2013, neither party renewed it. Years later, Teubal applied to register the “1/2 HOUR” trademark again in its exclusive name. Mondelez, which continued exploiting the sign publicly, continuously and peacefully, filed a claim for the recovery of the trademark and, alternatively, for the nullity of that application, invoking the bad faith of its opposing party.
At first instance, the nullity of the application was declared on the grounds that the attempt to exclusively appropriate the sign, after years of shared exploitation, constituted an application filed in bad faith, contrary to the principles of the Trademark Law and to commercial good faith. However, the Court of Appeals reversed this decision, establishing a strong criterion: a trademark application is a “mere expectation,” not an acquired right. As a general principle, only the granted registration (the final administrative act) is susceptible to a judicial action for nullity.
Nevertheless, the Court recognized that there are specific exceptions where the nullity of an application has been successful. These situations are limited to cases where the administrative procedure presents serious defects that would lead to inevitable nullity, such as forged signatures or spurious documents. Since in this case the dispute only concerned an attribution of exclusivity considered to be in “bad faith” by the opposing party, no grounds were found to depart from the general rule.
The decision highlights that the appropriate way to defend trademark rights is the administrative opposition. For this reason, it underscores the importance of monitoring trademark applications and acting before the INPI at that stage, rather than waiting to challenge the registration judicially once it has been granted.
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