Aruba Trademark Act and a mala fides trademark registration

Brazilian based Souza Cruz S.A. and Paraguayan based Tabacalera del Este S.A. were involved in a trademark dispute in Aruba over the cigarettes trademark PALERMO. Souza Cruz had registered the trademark in Aruba on December 1st of 1998. Tabacalea had used and registered the trademark since 1996 in Paraguay and other places. Tabacalera launched an opposition procedure based on the Aruba Trademark Act against the registration made by Souza. The claimwas based on a so-called “mala fides”-registration by Souza. Tabacalera also argued that Souza had no ”justifiable interest” to keep the registration. Tabacalera was successful in the Court of First Instance of Aruba and also won the appeal that was filed by Souza. In February 2006 the Supreme Court ruled in favor of Souza and overturned the decision of the Appellate Court. The Supreme Court ruled that the Aruba Trademark Act had limited grounds for a successful opposition and that neither the terms “mala fides” nor “lack of justifiable interest” were part of the limited grounds. The case was send back to the Appellate Court for re-evaluation following the limits set by the Supreme Court. Back at the Appellate Court the trial continued and ultimately ruled in favor of Tabacalera del Este re-establishing the initial rulings by the lower courts.