Argentina's Federal Court of Appeals has upheld EI du Pont de Nemours and Company's (DuPont) cancellation action against Topola SA's registration for the mark CORDURA in Class 18 of the Nice Classification, based on DuPont's registration for an identical mark in Class 23. The court also dismissed Topola's oppositions to applications filed by DuPont in Classes 18 and 24 for variations of its CORDURA mark (Case 2107/99, November 23 2004).

DuPont, which had registered the mark CORDURA in November 1988 for all goods in Class 23, filed applications for CORDURA NATURELLE, CORDURA CAT and CORDURA PLUS in Classes 18, 23 and 24. Topola opposed these applications on the basis of its registration for CORDURA in Class 18, which was granted on February 1995. At the mediation hearing DuPont informed Topola of its prior registration in Class 23. Topola then withdrew the opposition against the applications in Class 23, but refused to do so in respect of the remaining classes.

DuPont filed a legal action seeking to cancel Topola's registration by reason of (i) the fame of DuPont's CORDURA mark, and (ii) the close relationship existing between the goods of Classes 18 and 23. In the same action, DuPont asked that the oppositions entered by Topola be declared unfounded. The court of first instance upheld DuPont's action based on the fame of its mark. The court reasoned that the goods in Class 23 were used in the manufacture of suitcases and bags in Class 18, which led to an indirect confusion among consumers and the dilution of DuPont's famous mark. Topola appealed.

The Federal Court of Appeals upheld the decision. Its ruling contained the following findings:

• The protection granted by the Trademark Law is for the class of products or services for which the application was filed and granted. Accordingly, an opposition can only be upheld against a similar or identical mark filed in respect of the same goods and services as those for which the prior mark is registered. It is exceptional that an opposition against a mark filed in respect of other classes will be accepted, and this occurs only when the registration of the junior mark could lead to confusion as to the origin of the goods bearing the junior mark.
• Extending a mark's protection to classes for which it is not registered is allowed when the mark is considered famous. In this respect it is not necessary for a mark to become so famous that it is known by all the public: it is sufficient if it is known among the relevant section of the public.
• The court considered that DuPont's CORDURA mark had not reached a level of fame that warranted protection regardless of the products covered by other parties' registrations. However, the court recognized that the mark enjoys a certain reputation among a specific section of the public, and the court considered that Topola had tried to ride on that reputation.

However, the key facts that moved the court to uphold the earlier decision were as follows:

• the close relationship that exists between goods in Class 23 (ie, yarns and threads), and bags, backpacks and suitcases in Class 18 (many of which are made with yarns and threads);
• Topola had argued that there was indirect confusion between the goods in Class 18 and those in Class 24 (textile and textile goods) - an argument that the court considered valid when comparing the goods in Class 18 with those in Class 23; and
• Topola had used its mark in catalogues and brochures in a manner that led consumers to believe that its goods are made of DuPont's CORDURA-marked fibres; that conduct goes against the spirit of the trademark law, the aim of which is to prevent the public from being misled as to the origin of goods.

Fernando Noetinger, Noetinger & Armando, Buenos Aires

"This article first appeared on WTR Daily, part of World Trademark Review, in March 2005. For further information, please go to www.worldtrademarkreview.com