FEATURED CASE LAW
BY G. BREUER
Case: GINEVRA, ANTONIO c/ ARVENIG SA Y OTRO s/VARIOS PROPIEDAD INDUSTRIAL E INTELECTUAL (11187/2021)
Court: Cámara Civil y Comercial Federal, Sala II, 24/10/2024.
Subject: Co-Ownership of Trademark Registration
Interpreted Regulation: Article 9 of Law No. 22,362: “A trademark may be jointly registered by two or more persons. The co-owners must act jointly to license, transfer, and renew the trademark; any of them may file an opposition against the registration of a trademark, initiate the actions provided for in this law to defend it, and use it, unless otherwise stipulated.”
Facts: The plaintiff, Antonio GINEVRA, filed a lawsuit against ARVENIG S.A., seeking a judicial declaration for the partition of the co-ownership and dissolution of the joint ownership over the trademark registration of “GINEVRA.”
In this context, with the trademark’s expiration approaching and the defendant’s refusal to agree to the renewal, the plaintiff requested a precautionary measure to order the National Institute of Industrial Property (INPI) to renew the trademark registration upon expiration until the partition of the co-ownership is finalized.
The lower court judge granted the precautionary measure. In reaching this decision, the judge considered that given the subject matter of the case—partition of the co-ownership of the “GINEVRA” trademark—denying the plaintiff’s request would effectively allow the defendant, rather than the court, to determine the outcome of the litigation. This is because both co-owners’ consent is required to request the renewal of the trademark registration.
Ruling:
The Federal Court overturned the lower Court’s decision and dismissed the requested precautionary measure. To reach this decision, the court stated:
“The law established as a prerequisite for the renewal of a co-owned trademark the joint expression of intent by all co-owners at the time of submitting the renewal request.”
Regarding the expiration of the trademark’s validity period, the court remarked:
“This issue, while known to both parties, cannot be attributed to the party unwilling to renew a trademark that was originally registered under a co-ownership regime, under the pretext of maintaining the validity of the subject of an action whose cause—regardless of its merits—is tied to an ownership that expired after the period established in Article 5 of Law No. 22,362.”
The court further added:
“A judicial decision—taken even in a precautionary context—cannot be upheld if it disregards Article 9 of Law No. 22,362 and judicially substitutes for one party’s expression of will, without even addressing a constitutional objection to override what the law imposes as a requirement for performing this specific legal act.”
Ultimately, the appellate court concluded that there was no justification to deviate from the statutory expiration period for the trademark registration or from the requirement that all co-owners must express their consent when requesting renewal.
If you have any questions, inquiries, or comments, feel free to reach out at pbm@gbreuer.com.ar.