The Court Of Appeals Stated That The Trademark 'Vignes Des Andes' Is Not Confusingly Similar To 'AV Andean Viñas', 'Andean Viñas' And 'Andean Vineyards'

Author:Mr Patricio Albornoz and M. Florencia Bossi
Profession:M & M Bomchil

In a ruling dated June 12, 2017, in re "Vignes Des Andes S.A. c/ Grupo Peñaflor s/ Cese de oposición al registro de marca" ("Vignes Des and S.A. vs Grupo Peñaflor on cease of opposition to trademark registration"), Division II of the Federal Court of Appeals on Civil and Commercial Matters upheld the decision issued by the court of the first instance through which the motion submitted by Grupo Peñaflor against the application for the trademark " VIGNES DES ANDES" Serial Nº 3.046.049 in class 33 (which mainly includes wines and other alcoholic beverages) based on the registries "AV ADEAN VIÑAS", "ANDEAN VIÑAS" and "ANDEAN VINEYARDS" registered in the same class, was declared ill founded.

Like the judge of the first instance, the Court of Appeals sustained the distinctiveness between the signs.

The judge of the first instance had primarily based his ruling on the status of word of common use of the above mentioned element "ANDE" in class 33, and had considered that, even when the signs "VIGNES DES ANDES" and "ANDEAN VINEYARDS" had the same meaning in French and English, respectively, due to the fact that the former was not as widespread as the latter, such terms should be considered as "practically a fanciful expression". Lastly, the possibility of coexistence had also been justified by the differences added by the graphic element in the trademark "VIGNES DES ANDES".

Grupo Peñaflor appealed against this decision pleading that, among other arguments, the comparison performed by the court of the first instance had not taken the trademarks as a whole without making dismemberments, but it had segmented the signs, making focus only in the term "ANDE" and its status of word of common use in the class. In addition, the company stated that the ruling was inconsistent since it had recognized the identical conceptual meaning between the signs, and however, it had declared their distinctiveness. The appellant also affirmed that the graphic elements of the signs were mistakable, since both included representations of mountains.

The Court of Appeals decided to uphold the ruling of the first instance, declaring the distinctiveness of the trademarks at issue. The grounds to issue this decision were similar to those of the appealed ruling, highlighting that the registry of Grupo Peñaflor included the element of common use ANDE, and affirming that the fact that one word of common use is part of the registry, even if it prevents the monopolization of its use,...

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