Walmart Apollo LLC -represented by Palacio & Asociados- had requested the cancellation of the trademark AGRICUPON (& design) before the Trademark Office, alleging its lack of use. Article 26 of Trademark Law No.22.362 establishes that the Argentinian Trademark and Patent Office, either ex officio or at the request of a party, will declare the trademark cancellation even partially, in relation to the goods or services for which it has not been used in the country within the five (5) years prior to the cancellation request, unless there are force majeure reasons.
This, together with the infringement of a subjective right, makes it possible for a third party to file a cancellation request. The requirement to demonstrate a legitimate interest must be real and concrete, and not merely hypothetical or conjectural.
In this instance, Walmart based its legitimate interest on the potential confusion of the trademark “AGRICUPON” (& design) with its own registrations: “SPARK DESIGN” Record No. 2.710.455, and “HALF SPARK DESIGN” Record No. 2.811.253 both in class 35; which was accepted by the court.
In the first instance, the cancellation action was rejected by the PTO, even though the owner of trademark AGRICUPON did not present proof of use. When raising the case, the Chamber considered that the owner of the trademark did not have effective proof of use nor a legitimate interest in maintaining it, thus deciding to overturn the PTOS’s decision and declare the cancellation.
The Chamber emphasizes that the responsibility for proving use falls on the party better equipped with the resources and capabilities to present the necessary evidence. The prevailing jurisprudence in our field supports this reversal of the burden of proof, recognizing that the plaintiff cannot prove a negative fact.
Related article: Frequently Asked Questiones about Trademark cancellation in Argentina
Case review: our team opinion
We believe it is important to highlight that the Chamber sided with the complainant because the trademark owner did not answer the cancellation claim either administratively or judicially. The trademark use cited by the PTO to deny the cancellation request was not considered in the case resolution. Instead, emphasis was placed on the fact that the owner should have demonstrated an interest in defending his trademark. The passive attitude of the trademark registrant worked against them.
Furthermore, the resolution also concludes that the possibility of confusion constitutes a legitimate interest for requesting a trademark cancellation. Therefore, this action becomes a valuable tool for removing trademark registrations that may have similar or shared elements, without the need for them to be an obstacle to a pending trademark application as the Trademark Office tries to limit this action.
Ultimately, this ruling highlights the importance of actively using registered trademarks to maintain their legal validity and questions the PTO’s authority to replace the defendant in accrediting use. In other words, trademarks are registered to be used, and if they are not used, there is there is no other interest than the merely speculative one.
Authors:
Diego Palacio
IP Lawyer and Partner in Palacio & Asociados Argentina
IP Lawyer and Partner in Palacio & Asociados Argentina