On March 26, 2018, Chamber No. I of the Federal Court of Appeals in Civil and Commercial matters ratified the first instance ruling that had been issued in the file “GENERAL SWEET S.A. against VICTORIA CREAM S.A. about cease of use of trademark” (docket No. 11864/2005) dismissing the plaintiff’s claim in its entirety.

GENERAL SWEET S.A., owner of the trademark “PERSICCO”, had filed a lawsuit against VICTORIA CREAM S.A. (the latter represented by our Firm), for cease of use of an ice-cream container based on a three-dimensional trademark Reg. No. 2.009.841 and an Industrial Model Reg. No. 71.315 consisting in a kidney-shaped container that included, in its interior, a dividing wall and a cavity that the plaintiff alleged to have conceived with the function of accommodating ice-cream samples. Furthermore, the plaintiff demanded that the defendant ceased its unfair practice of using a third party’s image and its attempt to imitate the plaintiff’s commercial style or Trade Dress.

In the first instance, the judge dismissed the claim considering that the containers were included in the category of three-dimensional trademarks which are weak marks. The judge held that the plaintiff’s figurative mark (a container) did not constitute a distinctive mark since what was relevant was the denomination “Persicco” by means of which the products manufactured by the plaintiff were identified, being that these elements were used jointly and further pointing out the selective criteria of the consumer public at the moment of purchasing this type of food (ice-creams). Based on these arguments, after evaluating the containers in their totality applying the traditional comparison criteria and weighting the expert technical opinions, the judge determined that there were no reasonable possibilities of confusion. Additionally, she rejected the unfair practice claim given that, from the study of the different expert evidences included in the procedure, significant differences were apparent.

Having GENERAL SWEET S.A. appealed the first instance decision, the Chamber of Appeals ratified the ruling considering that, even though the containers had a functional similarity, they were unmistakable in their extrinsic aspects and morphological structure. Furthermore, the Chamber pointed out that the small cavity conceived to accommodate ice-cream samples, besides not being novel, was not protected by the plaintiff’s Industrial Model since, in order to obtain it, the plaintiff should have filed a Utility Model application for securing the protection of the functionality of the product, indicating that, from the conclusions of the expert graphic designer‑unchallenged by the plaintiff‑, significant differences between the containers were apparent, which corresponded to the graphical identity of the respective trademarks. This ruling further pointed out that it had not been demonstrated that the plaintiff’s container was a well-known mark nor that it had a distinctive character that represented by itself the PERSICCO trademark, emphasizing that it was the plaintiff’s responsibility to prove said assumptions since they have been invoked as grounds for the lawsuit. Moreover, the Second Instance Court rejected the claim that the defendant had adopted a parasitic behavior of unfair practice given that based on the expert opinions in the fields of architecture, arts and marketing techniques, graphical design and testimonial evidence it was concluded that there was no indication at all that could lead to affirm that VICTORIA CREAM S.A. had taken distinctive elements from the plaintiff to apply them in a similar and slightly disguised manner in their corporate image.