The Federal Civil and Commercial Court of Appeals (Division II) upheld a resolution of the Argentine National Institute of Industrial Property (INPI) that had rejected the opposition filed by Algabo S.A. against the registration of a design mark applied for by La Fármaco Argentina I.C.S.A. The dispute revolved around the design of a talcum powder packaging: flowers, colors, and a graphic layout that, according to Algabo, was confusingly similar to the line of packaging that it uses in the market.
The case did not concern two names, but rather the overall visual appearance of the packaging (trade dress). Algabo claimed that it had used that design since 2007 and that the applicant had allegedly copied it only as from 2019. However, upon reviewing the evidence, the Court found that Algabo’s own 2010 catalogue showed packaging with a white background and flowers that were completely different from the design invoked in the opposition; the floral motifs and the challenged palette only appear in its 2019 catalogues, that is, after the defendant’s application.
That time gap was decisive. The court determined that whoever opposes on the basis of prior use must prove the effective and public use of the design prior to the application being challenged. Having a logo registered since 2007 is not enough: the court clarified that such registration protects the name with design, but not the full packaging, with its colors and graphic layout. La Fármaco, in turn, proved that it had filed its application on 12/21/18, and therefore registration priority was on its side.
The ruling reviews a central principle of packaging protection in Argentine case law: it is not enough to state that the packaging has been used for a given period of time; such use must be proven with invoices, dated photos, advertising or catalogues. The lesson for companies is clear: documenting every packaging change from day one can make the difference between successfully defending a design or losing it to whoever arrived at the Registry first.
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