Trademark Caselaw | Argentina | Federal Appeals Chamber Rejects Kellog Company’s Bid for NUTRI-GRAIN
Earlier last month, the Civil and Commerce Federal Appeals Chamber, in Argentina, rejected Kellog Company’s appeal against a lower court’s ruling that found that El Modelo S.A.I.F.C.E.L. was entitled to oppose its trademark application for NUTRI-GRAIN, in class 30.
Kellog Company had filed an application for NUTRI-GRAIN, in order to identify “breakfast cereals, preparations made of cereals, edible cereal-based bars” in class 30, which was opposed by local company El Modelo S.A.I.F.C.E.L., based on its registration for NUTRI, which identifies the same goods, in class 30.
Since the parties were not able to reach a settlement, Kellog Company filed a motion to dismiss the subject opposition, which the lower court rejected finding that trademarks NUTRI and NUTRI-GRAIN were confusingly similar.
Kellog Company, then, appealed the lower court’s decision, arguing that the judge erred in its findings regarding the likelihood of confusion between both marks, since NUTRI was a common used term for goods in class 30, a fact it claimed was acknowledged by judge yet not taken into consideration upon rejecting its motion. It also argued that the defendant had tolerated the coexistence of both marks for over ten years.
Before addressing the comparison between the conflicting marks, the Chamber made it clear that even if they had coexisted or if previous applications had gone unopposed in the past, that did not prevent El Modelo S.A.I.F.C.E.L. from opposing a new application and enforcing its trademark rights, nor was it the decisive factor in order to allow for the coexistence of confusingly similar marks. The Chamber also ruled that, despite NUTRI being weak when applied to goods in class 30, it was a registered mark that had been continuously renewed and intensively used in Argentina, since 1975, which made it deserving of special protection that would also require additional elements from any new mark incorporating such term, so that there was no likelihood of confusion.
Upon comparing the conflicting marks, the Chamber ruled that the addition of the term GRAIN -which it found to have no widely-known meaning in Spanish- was not differentiating enough as to make the conflicting marks identifiable, in order to avoid the risk of confusion. Furthermore, it found that the consumers could assume that NUTRI-GRAIN was a new cereal bar sold by the registrant, which would result in the confusion it sought to avoid.
Trademark NUTRI as used by La Delicia Felipe Fort (FEL-FORT), as authorized by the registrant, under a license agreement.
As a result, the Chamber rejected Kellog Company’s appeal and ruled that it should also bear court costs from both its original motion and its appeal.
Click here to request a copy of the Chamber’s decision or in case you wish any additional information.
