Distinctiveness of the marks at issue, based on the Specialty Principle and the different activities of the parties involved.

Nov 3, 2016

Distinctiveness of the marks at issue, based on the Specialty Principle and the different activities of the parties involved.

On October 19, 2016, the National Court of First Instance in Civil and Commercial Rights Nº 5, in the case “CANSON vs/ Morgenstern EDUARDO NATALIO” (File No. 6723/2008) sustained the lawsuit filed by the creating company of the well-known sheets “Canson”, who is the leader in the segment of art papers and one of our Cabinet’s client.

 The judge ruled in favor of the coexistence on the market of the applied trademark  “XL” (mixed)  to distinguish “Paper for any artistic technique, including paper for fine arts, graphic art, drawing and painting” in Class 16, and the opponent’s trademark “XL EXTRA LARGE” (word) and “XL” (mixed and word) in classes 16, 18 and 25.

 While he observed that the conflicting signs share similarities, he stated that this case should be analyzed from the perspective of the Specialty Principle, as the trademarks involved protect different items.

 In addittion, it was noted in the ruling noted that the products offered by the claimant are aimed at a specific sector of the consuming public and a specific use (artistic activities), while the goods marketed by the defendant are intended for the general public (agendas, covers for documents and passports, leather products in general, among others), without the possibility that cases of direct or indirect confusion are set: “the activities deployed by the litigants run on very different lanes, which avoids any kind of confusion”.

It is important to highlight in this case the labor of the judge, who not only made an abstract comparison of the conflicting signs, but went beyond by applying the Specialty Principle and the procedural circumstances, arriving to a fair solution to this dispute.