Ricardo Richelet III
Richelet & Richelet
Argentina
Replevin actions in trademark matters
It has long been debated in Argentina whether an action
full knowledge of the existence of the chain.
in replevin is valid in IP matters. Recently, the courts have
However, Ricco claimed that he originally conceived
tackled this issue with regard to trademarks, with the
his mark in 1982 to cover the whole of Class 42, but
Chamber of Appeals issuing its ruling in a key decision.
actually used it for the sale of insecticides and garden
The Argentine Civil Code defines an ‘action in
fertiliser only. He also claimed that his registration was
replevin’ as “an action which derives from the ownership
not a mere copy of that of the plaintiff, and that the
of a certain thing, by which the owner who has lost
services were completely different from each other.
possession reclaims it from the party in actual possession
of the same”.
Lower court decision
This chapter analyses the concept of a replevin action
Both the lower court and the Chamber of Appeals
in order to consider whether this type of action is
decided the case in favour of Grupo Anderson, ordering
admitted in regard to IP matters and trademarks in
the nullification of Ricco’s mark. However, neither court
particular, which are in essence intangible rights, as
upheld the plaintiff’s claim for a replevin action.
opposed to tangible things as defined by the Civil Code.
In so ruling, the lower court established that by filing
an opposition in Class 42 the defendant was exploiting a
Recent decision
business similar to the plaintiff’s, and was presumed to
A recent decision by Room III of the Federal Civil and
have known about the existence of Grupo Anderson’s
Commercial Chamber of Appeals in Grupo Anderson SA
trademark. The fact that the marks were identical,
de CV v Ricco considered this issue.
coupled with the fact that Ricco gave no reason as to why
he had chosen his mark, could not just be coincidence.
Facts
The court decided that the defendant did not choose the
The case involved a famous Mexican chain of informal
same mark as the plaintiff for services in the same class
bars and restaurants which has existed since 1960 under
by chance, even if the actual services were not related.
the name Señor Frog’s. The chain also produces and sells
Therefore, the court found that there were valid
a line of casualwear at its premises. The trade name and
grounds to admit the nullification of Ricco’s mark as
mark comprise the figure of a green frog.
claimed by the plaintiff. In addition, it held that the
Grupo Anderson SA, which owns the chain, applied
registration of Ricco’s mark was contrary to good
for the registration of the mark in Argentina in Class 42
commercial practice. It also found the opposition filed by
(as established by the Nice Agreement). The application
Ricco to be invalid.
was opposed by Leonardo José Ricco on the basis of his
Further, the lower court held that this was a case of
prior registration in Class 42 of the mark SENOR
piracy; thus, the replevin action could not take place as
FROG’S, which consisted of exactly the same green frog.
the correct remedy for piracy is nullification of the
The applications for both marks covered all the services
infringing mark.
in the class.
Grupo Anderson sued for a replevin action against
Chamber of Appeals decision
the defendant’s trademark, undue opposition and the
Grupo Anderson appealed the lower court’s decision,
nullification of the defendant’s sign.
claiming that nullification was an insufficient remedy
Grupo Anderson argued that its restaurants and bars
and did not preserve all its rights as the registration of
were famous and well known all over the world, and that
Ricco’s mark took place prior to the plaintiff’s
the defendant had registered an identical trademark with
application. Therefore, Grupo Anderson claimed a direct
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Richelet & Richelet Argentina
assignment of Ricco’s mark to it in order for it to acquire
specified by the Trademark Law to remedy an act of
not only the certificate, but also all the rights evolving
piracy. Therefore, the court held that there was no reason
from the registration. In other words, Grupo Anderson
to admit the replevin action, because doing so would
sought the modification of the owner of the mark,
improve the plaintiff’s position with regard to third
wishing to take over all Ricco’s rights in the mark.
parties that could have greater rights than the plaintiff.
In considering the issue, the Chamber of Appeals had
to be critical. The definition of a replevin action is
Comment
established in the Civil Code and refers only to things
The decisions of both courts are correct and considered
and their possession – it does not deal with ownership.
the issue adequately.
Moreover, the Trademark Law mentions replevin
A party’s own thing must exist in order for a replevin
actions in only one article, which refers to the notification
action to proceed, and the law protects a party’s trademark
of complaints. It does not define this type of action.
– an intangible thing.
Therefore, the court had to consider whether the
The Chamber of Appeals emphasised that the
ability to claim this action in trademark and other IP
Trademark Law has adopted the attributive system for
cases had been established in a special law. The key was
obtaining trademark rights. In other words, in Argentina
to decide how this action works in IP matters. As no
trademark rights are acquired through registration of the
precise criteria have been established by law or
mark, not through use. Although this is the general rule,
jurisprudence for this type of action, the court reverted to
there are exceptions such as de facto trademarks, which
the analogy of rights over real property, since the
can be protected against illegal appropriation and/or use
replevin action is defined in the chapter on real property
based on the special laws, the Paris Convention and the
rights of the Civil Code.
Civil Code. However, these remain exceptions to the rule.
The Civil Code establishes a replevin action only for
Therefore, anyone who registers a mark in the
tangible things, defending possession rather than
knowledge that it is owned by another party directly
ownership. A strict interpretation of the definition,
impedes the original rights owner’s ability to exercise its
sustained by a large number of recognised authors,
rights of ownership.
impedes the extension of the scope of such an action
beyond possession and co-possession.
The courts understand that they have no right to
grant the alleged owner of a mark a reprehensible action
Therefore, the court had to consider the possibility of
against a third party that has pirated its mark when the
granting a right to the plaintiff with respect to a mark
third party bears no relation to the mark owner. In other
(owned by the defendant) which it had never applied for,
words, the ruling implied that there must be or have
registered or even used in Argentina. Thus, the court
been a previous relationship between the owner of the
held that in so doing it would be authorising an action of
mark and the pirate (ie, agent or representative) in order
appropriation, rather than a replevin action.
for this action to proceed. Furthermore, the pirate must
The court acknowledged the difference between the
have registered the mark without the consent of the mark
actions’ protection objectives; whereas the Civil Code
owner. If this is the case, the owner of the mark has a
protects a thing, the Trademark Law – although it makes
personal action against the agent or representative with
only a mere reference to the action – protects an
the aim of having the pirated sign transferred to it.
intangible asset and the proprietor’s right to its exclusive
The illegality of the pirate’s registration is related to
use. However, it also understood that between both
the fact that the registration is not really owned by the
actions there is a common denominator – the existence of
pirate, and that the pirate was aware of this situation.
something of one’s own to be claimed and not something
The law attributes the property of the mark to the real
of a third party, even when that something is similar to
owner rather than to the person who has illegally
one’s own thing.
registered it (ie, the pirate).
In view of this, the court decided that the replevin
As discussed above, this was not the case in the
action did not automatically derive from the nullification
decision at issue. Therefore, the courts concluded that it
declared by the lower court. It also declared that the fact
was not their intention to give a rights holder, whose
that the term ‘replevin action’ is mentioned in a special
mark has been pirated by a third party with no prior
law is not sufficient for the court to allow this type of
relationship with the former, the option to choose
action in favour of just anyone. Instead, it is necessary for
between a nullification action and a replevin action.
the party invoking the action to prove that it falls within
the boundaries of the rule of law.
The court established that nullification is the action
The specific remedy against an act of piracy is the
nullification action as established by the Trademark Law,
unless there has been a previous relationship between
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Argentina Richelet & Richelet
the rights holder and the pirate. This is the only case in
which a replevin action may apply.
As the courts concluded, if there has been no prior
relationship between the parties, it is unreasonable for
the rights holder to be placed in a better position than a
Conclusion
third party that may have acquired the rights in good
The courts have shed some light on the question of when a
faith after the pirate registered the mark. Therefore, it is
replevin action may be used. Over the years few parties
unreasonable for the rights holder to acquire by means of
have chosen this method of challenging a pirated mark.
a replevin action not only the trademark certificate, but
Now it has been made clear that an unlawful trademark
also all rights deriving from the registration.
registration can be transferred to the rights holder through
In cases where no such relationship exists, the
a replevin action only when a prior contractual relationship
Trademark Law provides for a nullification action in
existed between the rights holder and the pirate.
order to remove the obstacles posed by the pirated mark.
Ricardo Richelet III graduated from the Law School of the Argentine Catholic
University in 1999 and obtained his LLM degree in intellectual property from
Franklin Pierce Law Center in the United States. He has been a partner in the
firm since 2004. He heads the internet and domain names and precautionary
measures departments and is involved in trademark, patent and design
prosecution. He speaks Spanish, English and French.
138 Building and enforcing intellectual property value 2007
Ricardo Richelet III
Partner
Tel +54 11 4313 0184
Email [email protected]
Richelet & Richelet
Argentina