In May 2022, the final resolution of a trademark conflict that had started 12 years earlier between Ferrum S.A. de Cerámica y Metalurgia (Ferrum) and Facebook Inc. (Facebook) was made available. The conflict involved trademark oppositions and a cease of use request, brought under the previous trademark law, so the issue was settled in court, both in the first instance and in the appeal instance.
Notwithstanding the different specific issues that were submitted to the courts for decision by each of the parties, as we will describe in the following paragraphs, the main issue in this case was to determine whether the trademarks 
and 
were sufficiently similar so as to order the cease of use of the trademark , and to prevent the coexistence of the trademarks in the registry. And we say “in the registry” because, in the market, the trademarks coexisted between -at least- 2004, when Facebook made its worldwide launch, and 2022, when the decision of the Federal Civil and Commercial Court was issued.
The details of the case are as follows: a legal dispute between Ferrum and Facebook, that involved five cumulative processes between the same parties.
The first claim, which happens to be the cumulative case, was brought to the courts by Ferrum against Facebook, in relation to seven (7) trademark applications for , which Facebook filed in 2010 to identify goods in class 9, and services in classes 35, 36, 38, 41, 42 and 45. In this process, which began in August 2011, Ferrum argued that these trademarks were confusingly similar to its institutional logo , and requested: i) that the cease of use of the trademark applied for by Facebook be ordered; ii) that its oppositions be declared founded; iii) that the defendant be ordered to take the necessary steps and measures so that third parties do not use the challenged sign; and iv) that the publication of the ruling in mass media be ordered at the expense of Facebook.
At the time of answering the complaint, Facebook preliminarily claimed that the action sought by Ferrum should be barred due to the statute of limitation set forth by the Trademark Law, considering that since 2007 and until 2010, which is the date of filing of the oppositions, Facebook had used its logo in a peaceful, uninterrupted and ostensible manner, and had allowed third parties to use the sign by means of license.
The remaining cases, joined to the main proceedings, were brought by Facebook against Ferrum in February, May and August 2012, and sought to have the oppositions filed by Ferrum against the following Facebook trademark applications declared undue:
- “F8” (wordmark), in classes 38 and 41;
-
, in classes 9, 35, 36, 38, 41, 42 and 45;
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, in classes 35, 36, 38 and 41; and -
, in classes 9, 16, 35 and 36.
The bottom line
Let us begin the story by identifying the parties, as they themselves were presented in the dispute. On the one hand, Ferrum is a national company, leader in the ceramic sanitary ware market, with an important presence in the market of wood fiber boards, acrylic bathtubs and hydromassage, among others. It is a company that has been in business since 1897, which claims to be positively known by the consumer public, who also knows its outstanding history in the national industry.
On the other hand, Facebook is a company that started offering its social networking services globally since 2004, with over one billion users on a worldwide basis, and even millions of users in Argentina (at least at the time this legal action was brought), which uses its trademark frequently in advertising, as a way to promote the relationship between the company and its customers, acting Facebook as an intermediary. Facebook argues that its trademark is a well-known trademark.
The arguments supporting Ferrum’s position and substantiating its claim can be summarized as follows:
- That the trademark constitutes the sign that Ferrum chose as its institutional logo in the mid 70’s, whose trademark registration it applied for in 1973, and that such sign is also a commercial designation under the terms of the Trademark Law;
- That Facebook’s trademark is confusingly similar to its institutional logo, and features a typography identical to its own, in addition to the same color tone, which generates a risk of trademark dilution greater than usual, and that the damage to the trademark occurs regardless of the class, so that the principle of specialty is not applicable;
- That its mark is a well-known mark, and that Facebook appeared at a considerably later time;
- That the trademark is only known in the field of information technology;
- That, although the services provided by both companies are in principle unrelated, confusion is nevertheless generated in the consumer public; and that its activity is not limited to the mere manufacture of furniture, as it also offers community services that are identified with its trademark ; and
- That, although Facebook’s trademark is well-known, such characteristic does not validate the infringement of registered trademarks owned by third parties, which are precedent in time.
Facebook’s arguments in defense of its trademark applications are the following:
- That Ferrum already consented to other trademark registrations that Facebook obtained in Argentina, and that its logo has already been registered in multiple jurisdictions around the world;
- That the trademark is a well-known trademark, through which services are offered in more than 70 languages and to over one billion users around the world;
- That there can be neither confusion nor dilution based on a trademark designation, since this only protects the activity carried out by its owner, and not other activities or different branches, and that the companies do not operate in the same market, which rules out the claim on undue use of the fame and prestige of another’s trademark;
- That the registration of a trademark consisting of a single letter (in this case, the letter “F”) must be considered as a weak sign, so that it cannot be intended to monopolize the letter, nor the colors when specific colors have been...
