Uruguay IP Caselaw | Trademarks - Descriptive Marks (and Likelihood of Confusion)
On December 18, 2019 an Appeals Court in Uruguay confirmed a lower court’s assessment of the likelihood of confusion upon dismissing an infringement action in a case involving two trademarks, one of which was a descriptive mark.
The case involved the plaintiff’s trademark registration for GOURMET, and the defendant’s use of CONAPROLE QUESO PARRILLERO GOURNET, in connection with cheese. Oddly enough, once plaintiff’s case was dismissed by the lower court, an appeal was filed arguing that the subject court failed to understand that its case revolved around the exclusive use of GOURMET and not necessarily to the likelihood of confusion, claiming that the subject term “cannot be used even if it became generic or vulgar; that trademark GOURMET was granted to cover all goods in class 29 which includes -among others- the cheeses that CONAPROLE identifies with that term”.
Upon confirming the appealed decision, the appeals court found that the defendant did not use the term GOURMET as a trademark, but to describe qualities of its product, mainly identified with the CONAPROLE mark. The court further ruled that CONAPROLE’s use of the term GOURMET did not infringe upon plaintiff’s trademark rights, since it was merely used as a descriptive -and less relevant- element within a complex mark and that despite the plaintiff’s registration, the subject term should only be deemed registrable within a complex mark, where no exclusive rights are granted over such term by itself, so that the rest of the competitors are also able to use it.
Registration of descriptive terms, such as GOURMET, has been discarded throughout the world with IP laws in most jurisdictions including specific rules against it. The basic reasoning is that such a registration would give its holder an unfair advantage over its competitors. Many jurisdictions only allow for their registration when once they acquire a secondary meaning regarding specific goods or services.
