Dubai Chocolate: the new sensation that sparks trademark debate in Argentina

In the ever-evolving world of confectionery, Dubai Chocolate is quickly making a name for itself as the latest culinary sensation. But as popularity rises, so does the question: can this trendy name be legally protected as a trademark? In Argentina, the answer hinges on a complex interplay of trademark law, branding strategies, and geographic considerations.

The story began in February, when an application was filed in Argentina to register the mark DUBAI CHOCOLATE in class 30. The goal? To safeguard the brand associated with chocolates, ice creams, and popsicles. Just two months later, coincidentally or strategically, Argentine ice cream chain Lucciano’s, with the same legal counsel, applied for additional trademarks: LUCCIANO’S CHOCOLATE DUBAI and LUCCIANO’S ESTILO DUBAI, likely aiming to assert their own branding rights.

This flurry of applications raises a critical question: should the National Institute of Industrial Property (INPI) approve these trademarks? A careful legal analysis suggests that “DUBAI CHOCOLATE” might face significant hurdles under Argentine Trademark Law 22.362.

Legal grounds for potential rejection

1. Lack of distinctiveness: Trademark Law does not protect names, words, signs, or advertising phrases that have entered general use before the application date. “DUBAI CHOCOLATE” does not seem distinctive of a product belonging to a single producer in Argentina.
2. Geographical names are not registrable: Generally, geographic locations or city names, such as Dubai, are excluded from trademark registration. Moreover, in this instance, the application was not for DUBAI STYLE CHOCOLATE; instead, it was for DUBAI alone, referring to a place rather than a unique brand identifier in Argentina.
3. Priority and knowledge of third-party rights: If the applicant knew, or should have known, that the mark DUBAI CHOCOLATE belonged to Dubai’s original chocolatier, registration could be denied. Trademark law seeks to prevent bad faith registrations where entities attempt to register well-known or geographic terms for exclusive use without legitimate rights.

What about the follow-up applications?

The second set of trademarks, LUCCIANO’S CHOCOLATE DUBAI and LUCCIANO’S ESTILO DUBAI, might stand a better chance. By incorporating their company name, Lucciano’s adds a distinctive element that could help establish their brand identity. This strategy aligns with the legal perspective that adding a unique, company-specific term can facilitate trademark registration, even in cases involving geographic terms.

Challenges in protecting food recipes and brand names

Securing intellectual property rights for food recipes and branding strategies is often a complex process. Names that involve geographic locations or common terms are less likely to be registered unless they are combined with distinctive branding. Trademark Laws aim to prevent confusion, protect consumers, and avoid monopolizing language that has entered common use.

Given these considerations, it’s plausible that the Argentine INPI will reject the application for DUBAI CHOCOLATE on the grounds of descriptiveness, geographic name restrictions, and prior rights. Conversely, the more specific trademarks incorporating Lucciano’s name may clear legal hurdles, provided they meet other criteria, such as distinctiveness.

Final thoughts: implications for brands and consumers

This case exemplifies the importance of strategic branding and legal foresight. Food and beverage companies must strike a balance between marketable names and legal protections to prevent disputes and maintain brand integrity. For consumers, it serves as a reminder that behind every catchy label lies a complex legal framework that ensures fair competition and transparent information.

As Dubai Chocolate captures imaginations across Argentina, its legal fate as a trademark remains uncertain. Whether or not the trademark applications succeed, the case underscores a vital truth: in the world of branding, especially for food products with international or geographic elements, understanding legal boundaries is as important as creating outstanding flavors.

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