Following a recent article published by World Trademark Review (WTR) on an important Argentine ruling concerning trade dress and packaging protection, which includes the opinion of our partner Celia Lerman, we hereby present some of the main aspects of the decision and its practical impact for companies.
In this precedent, “Laboratorios Felipe Bajer SA c/ Laboratorios Montserrat SA y otro s/ cese uso de marca” (Docket No. 3778/2019), involving pharmaceutical laboratories, the Federal Civil and Commercial Court of Appeals reaffirmed an increasingly relevant criterion in intellectual property matters: the visual identity of a product may be protected even when it does not have a specific registration.
The court held that the relevant issue was not the existence of a registration for the packaging design, but whether the product’s visual presentation had acquired distinctive character in the market.
What aspects of the decision stand out?
- Trade dress protection extends to the set of visual elements that identify a business origin, including colors, fonts, graphic layout, design and packaging.
- The assessment must be carried out based on the overall impression created by the product, rather than through an isolated comparison of its individual elements.
- It is not necessary to prove actual confusion: the possibility of association or potential confusion may be sufficient.
- Protection may extend even where the packaging is not directly observed by the end consumer, if it influences other relevant actors in the commercial chain.
The decision reinforces a key idea: visual identity is an intangible asset with value of its own, the protection of which may be just as important as that of a registered trademark.
For companies, the message is clear: documenting and preserving evidence of the sustained use of its commercial presentations, maintaining visual consistency and preserving evidence of their market positioning may be decisive in future disputes.
This is a significant step forward for the protection of trade dress in Argentina and a warning for those who design new products by taking their competitors’ image as a reference.
The full analysis is available on World Trademark Review (subscription required):
https://www.worldtrademarkreview.com/article/argentina-court-raises-stakes-copycat-packaging
If you need advice on trademark registration, use, and protection, you can contact our team at info@lermanslzak.com
