MARCH 31, 2021

Court precedents | “De facto” trademarks. Preventive measure. Proceeding. The owner of a “de facto” trademark has a legitimate interest to request an injunction to cease use.


Court precedents | “De facto” trademarks. Preventive measure. Proceeding. The owner of a “de facto” trademark has a legitimate interest to request an injunction to cease use.

“La Roche Posay Laboratoire Dermatologique and others v. Savant Pharma S.A. and others s/ various industrial and intellectual property”, Federal Court of Appeals on Civil and Commercial Matters, Division I, March 31st, 2021.

On March 31st, 2021, Division I of the Federal Court of Appeals on Civil and Commercial Matters revoked the decision of the Court of First Instance that dismissed (i) an injunction to stop the use of a combination of colors and distinctive signs to distinguish skin, hair and/or body creams and other cosmetic products, (ii) the cessation of use in advertising and promotion of such products by any means, and (iii) the jurisdictional protection of “de facto” trademarks.

We reproduce hereunder the trademarks used by the plaintiff vs. the trademarks used by the defendant:












The Court of First Instance, who dismissed the requested measure, took into account the innovative nature of the measure, the fact that the trademarks of the co-defendant Laboratorios Szama in classes 3 and 5 which are the object of this injunction were granted in 2020, and the fact that the plaintiff has not registered the trademarks formed by the distinctive elements. In this regard, the Court took into account the attributive system in force in our country and that the plaintiff had not submitted sufficient evidence to prove the use for a sufficient period of time to constitute a “de facto” trademark; he pointed out that the accounting invoicing and the images of the containers submitted were not suitable for such purpose.

The Court of Appeals stated that, since the irreparable damage invoked by the petitioner based on the use indicated cannot be ruled out, it is appropriate to admit the requested injunction (…) since the Trademark Law itself -in its Section 4 – provides that “to exercise the right of opposition to its registration or use, a legitimate interest…of the opponent is required (the emphasis belongs to the Court). It follows that the owner of a “de facto” trademark, used with the characteristics described above, has the right to request the cessation of use of a similar or confusingly similar trademark, since the Court, on numerous occasions, has recognized the value of the trademark used (cf. this Division, doctr. cases 1980 of 16/10/87, 4979 of 5/2/88 and 54653/95 of 27/06/96 and 3063/07 of 19/04/07, among others; Court II, case 4343 of 27/08/93), which clearly means that the holder has been admitted as having a “legitimate interest”, as required by law 22,362. The said solution, which can be inferred without any interpretative effort from the aforementioned Section 4°, also finds support in the guiding principle of the former Section 953 of the Civil Code, which is included in Section 279 of the Civil and Commercial Code of the Nation, which prohibits immoral acts or acts contrary to good customs (cf. Division II, case 4343 of 27/08/93 and this Division, case 3063/07 of 19/04/07).

As a consequence thereof, taking into account the scope of the consequences that could be derived for the defendants from the provisional cease in the promotion and use of the trademarks in question, as well as the scarce elements incorporated into the case to fix the amount of the counter-guarantee provided for in Section 50 of the TRIPS Agreement, the Court revoked the appealed decision and, consequently, ordered Savant Pharm S.A. and Laboratorios Szama S.A. to cease the use of the color combination indicated in the decision to distinguish dermatological products and to advertise them, and set the counter-guarantee at five hundred thousand pesos (AR$500,000).

Finally, the Court has already recognized the right to this type of measure to holders of “de facto” trademarks in the past, although due to the very nature of the injunctions to cease the use of a trademark, which are innovative measures, their interpretation is restrictive.