In re “MS ESTHETIQUE S.A. c/ Martín Mirta Susana” (case No. 3639/2011), dated February 24, 2022, Chamber III of the Federal Civil and Commercial Court of Appeals ordered MS ESTETIQUE S.A. to cease the use of the trademarks “MS” and “MS ESTHETIQUE”, for the infringement of Mrs. Martin’s exclusive rights over the trademark “MS” (pursuant to article 4 of Law 22.362).
MS ESTHETIQUE had applied for the trademarks “MS” and “MS ESTHETIQUE” before the National Institute of Industrial Property and Mrs. Martin filed oppositions against those marks since she had registered the trademark “MS” in 2007 to provide beauty and spa services (class 44).
Consequently, MS ESTHETIQUE filed a lawsuit -seeking the rejection of the oppositions- against Mrs. Martin, who counterclaimed requesting the cease of use of the trademarks “MS” and “MS ESTHETIQUE”.
Although the plaintiff withdrew the legal action against Mrs. Martin, the judge admitted Mrs. Martin’s claim as he considered that the trademarks were identical and both parties provided beauty and spa services. He also stated that the renewal of the domain name “msesthetique.com.ar” before NIC Argentina, demonstrated MS ESTHETIQUE’s interest in continuing to use the trademark “MS”.
The counterclaimant appealed the decision alleging that the judge had omitted the withdrawal of the legal action and that the business had erased the trademark “MS” from its shop window and access door. In addition, MS ESTHETIQUE had modified the name of the clinic that finally closed in January 2018.
The Court of Appeals ruled that none of the points raised by the appellant modified the first instance decision. It also highlighted that the cease of use order always proceeds when there is trademark infringement as it prevents the undue advantage of a sign that belongs to a third party. Therefore, it was decided that:
– The First Instance judge did not ignore the withdrawal of the action. Instead, he considered that it was appropriate to accept the request made by the counterclaimant, who decided to continue with the action in order to obtain a ruling that would put an end to the matter.
– The fact that the marks on...
