This is an informal case summary prepared for the purposes of facilitating exchange during the 2022 WIPO IP Judges Forum.
Session 4: Provisional Measures in IP Disputes (Part I)
Federal Civil and Commercial Court of Buenos Aires - Chamber I, Argentina [2021]: Ríos, Matías Federico v Mercado McCann S.A.
Date of judgment: December 7, 2021
Issuing authority: Federal Civil and Commercial Court of Buenos Aires, Argentina
Level of the issuing authority: Appellate Instance
Subject matter: Enforcement of IP and related laws, trademarks
Plaintiff: Matías Federico Ríos
Defendant: Mercado McCann S.A.
Keywords: Provisional measures
Basic facts: The Plaintiff registered the trademark YENDO before the National Institute of Industrial Property (“INPI”), for transportation services. The Plaintiff became aware of the broadcasting in different media of advertising in which its trademark YENDO was being used by Defendant to promote a different passenger transportation service.
The Plaintiff filed a lawsuit against Defendant to cease the use of the trademark YENDO, and requested provisional measures.
On October 7, 2021, the judge of the first instance denied the Plaintiff’s request for both provisional measures and the removal of the Trademark YENDO from all elements where it was being used.
On December 2021, Plaintiff submitted before the Federal Civil and Commercial Court of Buenos Aires - Chamber I (the “Court of Appeals”) a request for provisional measures to confirm the infringement of the Plaintiff’s trademarks, and for the Defendant to be ordered to cease the offering, marketing, and any type of use concerning the services identified with the trademark YENDO; and to instruct Defendant to remove the trademark YENDO from all elements in which it was used, and from any place in which it is advertised, by any means, including Internet and/or social networks, graphic advertising on public roads, until a final judgment is rendered in the proceedings.
Held: The Court confirmed the decision of the first instance court and denied the request for provisional measures.
Relevant holdings in relation to provisional measures: The Court noted that for provisional measures to be granted, there must be a sufficient degree of certainty as to the infringement -actual or imminent- of the protected right; and in this case, because of the innovative nature of the requested provisional measures, the likelihood of the right invoked should be assessed with even stricter criteria.
Applying a comparative analysis of the advertisements prepared by the Defendant, the Court deemed that the verisimilitude of the right invoked by the plaintiff had not been proven.
Relevant legislation:
Article 50 of the Agreement on Trade-Related Aspects of Intellectual Property Rights
Articles 38 and 39 of Law No. 22.362 on Trademarks and Designations