Allende & Brea had the opportunity to intervene in a new successful case regarding a trademark claim for use of an unauthorized sign on the Internet as a “keyword”. The previous relevant case in the same matter has been “Organización Veraz vs Open Discovery (Record N° 1789/2009) also with favorable sentence.
In the above-mentioned case (Record N° 10768/2009) the plaintiff Geniver SAS is engaged in the commercialization and shipment of regional products from Argentina to other countries of the world, through its web page www.pampadirect.com under the trademark “Pampa Direct”.
Geniver SAS requested an injunction to the court to order Podios SRL (a competitor of services for the purchase and sale of regional products online) to stop using the trademark “Pampa Direct” in the content of the advertising Podios SRL made on the Internet, as well as a keyword in Google’s AdWords advertising system.
The first instance court decision dated September 12, 2022, held that the commercial activity of Geniver SAS is a service to be performed abroad and not in Argentina. Considering that the right derived from the trademark registration only provides exclusivity on the use of the sign in the country where it was registered, the judicial authority dismissed the claim since the exclusion of use in other foreign countries could not be extended.
The verdict was appealed on the grounds that the acts of unfair competition and trademark infringement carried out by Podios SRL are conducts carried out in Argentina and that the unfair competition and the damage occurred in the country.
In a decision dated November 08, 2022, Chamber I of the Federal Court of Appeals revoked the first instance judgment, considering that both Geniver SAS and Podios SRL are Argentine companies, that both websites offer similar services, and that the effects of the use of the sign “Pampa Direct” in the advertising of Podios SRL in third countries also impact in Argentina.
Consequently, Chamber I ordered Podios SRL to refrain from using the sign “Pampa Direct” on the Internet, regardless of the place where the user can access it through the search engines www.google.com.ar and www.google.com.
