The court of appeals emphasizes the necessity that the consumers identify directly the products with the trademark object of the claim and that it is not a secondary sign.
In a ruling dated May 16, 2017, in the case entitled "Nike Argentina SRL v. Pace Susana on nullity of trademark", Division III of the National Court of Appeals in Federal Civil and Commercial Matters revoked the judgment of First Instance which had sustained the request for cancellation of Nike Argentina S.R.L. ("Nike Argentina") of the trademark "ZOOM" (registered at the name of Ms. Susana Pace).
The First Instance judge sustained the plaintiff's claim, who had requested the cancellation of registration of the trademark "ZOOM", in class 25 (Reg. No. 2.047.506), with foundation in the evident use at a worldwide level of the trademark "NIKE ZOOM" and in section 24, subsections b and c of the Trademarks Law No. 22.362, which sets forth: "nullity of the registered trademarks (...) by whom, upon the request of the registration, knew or should have known they belonged to a third party (subsection b), for its commercialization, by the person that develops as usual activity the registration of trademarks to such effect (subsection c)".
Likewise, in the First Instance, the judge rejected the counterclaim of the defendant which requested to order Nike Argentina to cease with the wrongful use of the trademark and pay damages.
According to the facts detailed in the decision, Nike Argentina used as from year 1999 the sign "ZOOM" together with its trademark "NIKE" ("NIKE ZOOM") to identify a special kind of trainers, which had a technology based on the incorporation of air chambers to achieve the reduction of impact against the surface. Nevertheless, the company had not registered such trademark in Argentina.
On its part, the defendant had started in 2003, together with two partners, a project for selling clothes aimed at the young market, using the trademark "ZOOM" to identify its products. At that stage, the sign was registered in class 25 in the name of a plastic manufacturer, Ms. Pace achieved to register the trademark "ZOOM" on October 19, 2005, since such company did not renew the trademark.
The arguments of the First Instance judge to sustain the claim of Nike Argentina was the well-known character of the trademark "NIKE", considering also that the company had associated the word "ZOOM" to the trademark for the identification of a special kind of sport shoe and the possibility...