In a dispute between Banco de Inversión y Comercio Exterior SA (BICE), an Argentine financial entity, and Banco Bice, established in Chile, over use of the name BICE, the Federal Court of Appeals has upheld a decision of the First Instance Court, holding that because BICE had been known by this acronym for at least one year before Banco Bice filed suit, the latter's claim was time barred under the Trademark Law. The court also found that BICE's opposition against Banco Bice's applications for the registration of the trademarks BANCO BICE and BICECONSULT was admissible, and rejected Banco Bice's opposition against the registration of the trademark BICE by the Argentine bank (Court Files 15088/94 and 15076/94, October 20 2009, only recently released).

In a first lawsuit, Banco Bice requested that:

• BICE cease using the trade name BICE;
• the court declare that its applications for the registration of the trademarks BANCO BICE and BICECONSULT were admissible; and
• the court uphold its opposition against the registration of the trademark BICE by the Argentine bank.

In a second lawsuit, BICE requested that:

• Banco Bice cease using the names BICE and BICECONSULT on the grounds that they were confusingly similar to its trade name BICE;
• the court declare that Banco Bice's opposition against the registration of the trademark BICE in Classes 35 and 36 of the Nice Classification was inadmissible; and
• the court uphold its oppositions against the registration of the trademarks BANCO BICE and BICECONSULT by Banco Bice.

Both proceedings were forwarded to the First Instance Court, which issued a single decision. First, the court held that Banco Bice's claim requesting that BICE cease using the trade name BICE was time barred. Second, the court found that Banco Bice's opposition against the registration of the trademark BICE by the Argentine bank was inadmissible. Finally, the court upheld the oppositions against the registration of the trademarks BANCO BICE and BICECONSULT by Banco Bice. 

Banco Bice appealed to the Federal Court of Appeals.

First, the court held that when Banco Bice requested that the Argentine bank cease using the name BICE, the latter had already acquired the right to use the name BICE and, therefore, the claim was barred under the statute of limitations.  

The court established that, as Banco de Inversión y Comercio Exterior had, from the start of its operations, been referred to by journalists as 'Banco BICE' or 'BICE', and this name had been voluntarily accepted by the bank, the latter was thus known as 'Banco BICE' or 'BICE'. The court highlighted that it was not surprising that the Argentine bank should be known under the acronym BICE, as there was a trend to shorten long names or trademarks.

Further, the court considered that the Chilean bank had not proved that it had established use of the name Banco Bice in Argentina. Banco Bice's operations had not extended beyond the administrative sphere, and there had been no public and ostensible use of the name in that country, as required by the Trademark Law, so as to give rise to rights in the name. The court thus concluded that, in Argentina, the acronym BICE was clearly, publicly and ostensibly linked to the Argentine bank, to the exclusion of all others.

Finally, as the Argentine bank had a better right to the acronym BICE, the court dismissed Banco Bice's opposition against the registration of the trademark BICE by the Argentine bank, and upheld BICE's opposition against the applications filed by the Chilean bank.

Fernando Noetinger, Noetinger & Armando, Buenos Aires

"This article first appeared on WTR Daily, part of World Trademark Review, in March 2010. For further information, please go to www.worldtrademarkreview.com