On March 11, 2021, Division 1 of the Federal Court of Appeals in Civil and Commercial Matters in the city of Buenos Aires confirmed the district court’s decision which declared grounded the opposition against trademark application for “FAMILIAS SABORIZADAS” (“FLAVORED FAMILIES”), filed by SOCIÉTÉ DES PRODIUTS NESTLÉ S.A. to distinguish “all the goods included in class 32” (this class mainly includes non-alcoholic beverages, as well as beer).
The opponent, AGUAS DANONE DE ARGENTINA SA, had alleged that the expression “FAMILIAS SABORIZADAS” should not be considered as a trademark and therefore not registrable, as it is merely descriptive of the “nature, function, qualities or other characteristics” of the goods to be identified and, in addition, it may “mislead as to the nature, properties, merit, quality, processing techniques, function, origin, value or other characteristics” of such products (section 2°, paragraph “a”, and section 3°, paragraph “d” of the local Trademark Act).
The district court had rejected NESTLÉ’s claim since he considered that the word “‘SABORIZADA’ [flavored] is merely descriptive of the goods to be distinguished (namely, flavored beverages) and “the term ‘FAMILIES’ [familias] fails to provide the sign with the required distinctive character to constitute a suggestive trademark”. Additionally, he deemed that “the applied trademark in class 32, ‘FAMILIAS SABORIZADAS’ refers to a family of flavored beverages”. Therefore, “said sign exceeds the orbit of a merely suggestive expression to become descriptive” and, as a result, it may not be registered “since it deprives the sign of the novelty that a trademark should have to identify goods or services”.
NESTLÉ had argued that “for being considered as merely descriptive, the entire trademark must describe the identified goods, not just one of the words included in the expression” and that “the combination of the term ‘families’ with the term ‘flavored’ constitutes an original expression worthy of registry protection”. In line with this argument, it was pointed out that “the customary or necessary expression to refer to these goods is ‘flavored waters’ and...
