Trademark Caselaw | Argentina | Rights of a Trademark Applicant

The National Civil and Commercial Appeals Chamber, in Argentina, confirmed a lower court’s decision that declared the annulment of a trademark registration for FASHION HOUSE in class 41 due to a pre-existing application for FASHION HOUSE HABITAT DE DISEÑO CONCEPTO - ESTILO - MODA (Logo), which was wrongfully deemed abandoned by INPI, Argentina’s patent and trademarks authority.

Trademark application No. 2.890.832 for FASHION HOUSE HABITAT DE DISEÑO CONCEPTO - ESTILO - MODA (Logo) was filed almost four years prioir to the application FASHION HOUSE, worngfully granted by INPI.

INPI had filed suit, seeking the annulment of its own decision to grant the subject registration and admitting that such grant was the result of an error, when it wrongfully deemed a pre-existing application for a confusingly similar trademark abandoned.

In confirming the lower court’s decision, the Chamber addressed the rights resulting from filing a trademark registration and found that, although filing a trademark application does not guarantee a grant of such mark, it does comprise an expectancy right and the prelation to the trademark registration, meaning that INPI cannot examine and/or grant a registration for the same trademark, as a result of a subsequent application filed by a third party.

This right of prelation (or prelación, in Spanish) in the most essential right resulting from filing a trademark application, especially in first-to-file jurisdictions, since it will provide the applicant with a preferred position with regards to third parties filing applications for the same trademark on a later filing date/time. Therefore, the Chamber found it necessary to confirm the annulment of the trademark registration that had been granted in violation of the right of prelation resulting from the pre-existing application.

Although clearly related, this right is different from the priority right as prescribed in both the Paris Convention and the Trips Agreement, which allow a trademark applicant with a time-limited right to file subsequent applications for the same trademark, in different countries, while claiming the filing date of the first application.

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