It is a story that seems to never end. The legal conflict between Boxes Car Center and YPF has been going on for eight months at the Intellectual Property Institute (INAPI), a period in which the Chilean enterprise has had to confront the Argentine giant to free the use of the word that defines its brand.
What is affecting Javier Arenas, the entrepreneur behind this high-end vehicle workshop, the most at this moment is that the process is being delayed by the Argentine company, which he believes is a strategy to try to wear him down—in every sense, emotionally and financially—and finally make him give up on continuing with the litigation.
He clarifies that at this moment the process is in the evidentiary stage, but says that at the end of May “YPF requested to extend the evidentiary term and in view of the quality of a foreign company they were granted the extension. In addition, the trans-Andean company presented an objection to the documents because they were supposedly simple copies and their integrity was not known because no one had validated them.” This forced Arenas to incur new expenses, such as having the challenged documents notarized.
“This extends the trial and therefore postpones the possibility that the registration will one day be annulled. They probably did this to delay and extend the validity of the registration in case we are successful. Objecting to documents is the normal thing that any defense does and delaying is the common strategy in cases of nullity. As long as there is no ruling, the trademark registration will remain valid,” says Hans von Marttens, a lawyer from the Ármate Abogados law firm that represents Boxes Car Center.
Despite this, the professional is positive. “It opens up an opportunity for us to present new means of proof because they themselves extended the evidence,” he says. And he adds that legally there is hope, because “article 20 letter e) of the Industrial Property Law establishes a prohibition on the registration of generic terms, which describe qualities of services or designate a certain class of services in commerce. This prohibition seeks to avoid situations like the one faced by Javier, where YPF took over the term ‘boxes’, which in motorsports refers to the space for assistance and maintenance of cars. The logical thing is that INAPI corrects its error and annuls the registration of the Argentine company,” the lawyer emphasizes.
How did this unequal dispute start?
In 2010, YPF registered the term “boxes” with INAPI and, although normally no one can appropriate a generic term like this, INAPI, due to technical ignorance, granted said registration to the Argentine oil company.
In mid-2023, when Arenas wanted to register his trademark (Boxes Car Center), the problem became evident and prevented the high-end vehicle maintenance and repair shop from continuing with the process. This led the entrepreneur to make the decision last October to turn to this entity to request the annulment of the registration made by the trans-Andean company of a concept so common for the automotive sector.
“We are in this legal conflict specifically with the word ‘boxes’, since it is part of our brand. It was disconcerting to find this unexpected situation at that time, because it is like appropriating the word ‘pits’ in motorsport or ‘pizza’ in gastronomy,” explains Arenas.
Investigating more about the blockage in INAPI, Javier discovered that “YPF Boxes” had been registered, a concept that the company uses in Argentina for its lubrication centers in service stations. However, the unusual thing is that they also appropriated the word “boxes” simply.
“We are appealing because the word ‘boxes’ is generic and anyone can use it. Furthermore, our activity is different from theirs; “We are a mechanical workshop specialized in comprehensive maintenance and repair, not just in oil changes,” clarifies the affected entrepreneur, who will have to continue waiting for a ruling that will allow him to continue with his brand that has taken him four years to position.
