The Reputation of a Mark Was Not Enough to Consider It Notorious in Argentina

The plaintiff filed an application for trademark "CHAMPION" to cover "shirts, underwear and socks, clothing specially designed for sports, or imitation fur garment". This application met with an opposition filed by Champion Products, Inc. (now Sara Lee Global Finance LLC) on the basis of the registration of the trademark "CHAMPION" in various countries to distinguish well-known sportswear that had been extensively used, well in advance of the plaintiff’s trademark application. The defendant also stated that the word "Champion" was part of its trade name and domain name.

The first instance judge upheld the claim and declared the opposition partially ill-founded since the defendant had partially withdrawn the opposition with regard to "natural fur garment imitation" and therefore the application was restricted to cover "shirts, underwear and socks."

Based on Paris Convention’s provisions, the Court understood that the competent authority to conduct the assessment of notoriety is the one based in the country where protection is sought. Therefore, although in this particular case the defendant still enjoyed popularity and fame in the country of the original registration and in many other foreign countries, it did not have such popularity and public awareness in Argentina, where the opposing mark was not considered well-known.

The Court pondered a double order of interest: (i) that of the local merchant who positioned its mark in a specific area of the market and, on the other hand, (ii) the interest of consumers, who acquire a growing knowledge of the products identified with the American trademark "CHAMPION" designed for sportswear. According to the Court, the latter mark would suffer a serious damage –derived from the confusion as to the origin and quality of products– if both trademarks coexist in the market to identify the same goods.

Therefore, Division I modified the trial court decision and upheld the opposition with respect to products specially designed for practising sports. The Court also ordered that the applicant's mark be restricted to distinguish "shirts, underwear and socks, fur clothing natural or imitation, except to the extent that such products are specially designed for practising sports."

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		Iván Poli
		Alejandra Morgade