TRADEMARKS IN ARGENTINA
1. The Argentine Trademark System
Trademarks are signs that distinguish products and services. Even though the Trademark and Trade Name Law only protects trademarks registered in Argentina, those which are not registered in this country are also protected by other laws and regulations, as explained below.
a. Registered Trademarks Protection
In Argentina, ownership of a trademark and the exclusive right to use it can only be obtained by registering the trademark with the competent administrative authority. This legal system is known as "attributive" because it grants rights over a trademark upon registration.
b. Non-Registered Trademark Protection
Even though registered trademarks are protected by the Trademark and Trade Name Law, non-registered trademarks also enjoy legal protection in some cases. Courts have protected non-registered trademarks based on General Principles of the Law and Civil Code provisions that prohibit immoral acts. For example, "use" of a non-registered trademark prior to a third party's filing for registration of a similar trademark, is sufficient for a prior user to successfully oppose to registration. Also, prior use is considered valid ground to nullify a trademark registered by a third party. Prior use of a non-registered trademark must be in good faith, intense enough to generate clients, without confusing the public, without taking unduly advantage of other trademarks' prestige, and causing or inducing to errors.
A non-registered trademark holder can obtain a preliminary injunction to temporary stop other people from using such trademark, as long as it was used as indicated above.
Non-registered trademarks are also protected by criminal law provisions that consider fraud the intentional imitation of other people's trademarks to confuse the public. These provisions are very useful to protect non-registered trademarks.[1]
c. Territorial Scope of Trademark Rights
The exclusive right of a trademark holder is limited to the Argentine territory. A trademark holder interested in obtaining legal protection in other countries must request it and obtain it in such countries.
d. Exclusive Use of a Trademark
A registered trademark holder has the exclusive right to use it, and is allowed to transfer or license it. A trademark holder can also prevent third parties from using the same or a similar trademark which could confuse the public or somehow affect trademark holder's rights.
e. Duration
A trademark registration is valid for ten years, renewable indefinitely for identical periods.
f. Applicable Treaties, Laws and Regulations
The most relevant treaties, laws and regulations governing trademark rights in Argentina are the following:
1) TRIPS Agreement, adopted by Law No. 24.425;
2) Paris Convention on Industrial Property Protection, adopted by Law No. 17,011, and the Stockholm Act, adopted by Law No. 22,195;
3) Trademark Law No. 22,362;
4) Trademark Law's Regulatory Decree No. 558/1981;
5) Decree No. 1141/2003;
6) Penal Code, article 159.
2. Major Trademark Topics
a. Signs that can be Registered as Trademarks
The general rule is that every sign that can distinguish products and services can be registered as trademark. The distinctive condition of such signs is critically important for registration purposes.
Among the signs most frequently registered as trademarks are the following:
1) Trademarks with Conceptual Content
Trademarks with conceptual content have a meaning in the language, such as "The Castle" for bricks.
2) Fantasy Trademarks
As indicated by the name itself, fantasy trademarks include fantasy words that might have no meaning at all, such as Yahoo! or Pepsi;
3) Evocative Trademarks
Evocative trademarks allow consumers to know with some clarity the characteristics of the products and services identified with such trademarks. For example, "Autofocus" for a magazine specialized in cars.
4) Emblems
Emblems are drawings that portrait objects or other subjects that exist in the real world. For example, the drawing of a jaguar that identifies the automobile trademark "Jaguar".
5) Drawings
Drawings that portrait either real or unreal subjects can usually be registered.
6) Other Signs that can be Registered
Monograms, engravings, seals, images, bands, combination of colors applied to a product or package, packages, combination of letters and numbers, advertisement phrases, sounds, odors, periodic publication titles, among others.
b. Signs that cannot be Registered as Trademarks
The most relevant signs not allowed to be registered as trademarks are the following:
1) Necessary Designations
This category includes names, words and signs that are the necessary name of a product or service. For example, signs including the word "derma" to identify makeup products. It is not necessary that the public in general can identify the necessary sign with a product or service, it is sufficient that certain people can do it because of their profession or other reasons.
2) Usual Designations
These designations are names, words and signs that are usually used to identify products or services, such as those coming from slang or foreign languages.
3) Descriptive Designations
These designations are names, words and signs that describe the nature, function, quality or other characteristics of the products or services. For example, the word "heater" to identify ovens, or "flyer" for planes.
4) Generic Designations
These designations are names, words and signs that identify the class or type of a product or service, such as "boat" or "plane".
5) Generally Used Signs
This category includes names, words, signs and advertisement phrases generally used to identify products or services by the time the trademark registration petition is filed. For example, the word "aspirin". It is not sufficient that a group of individuals use these signs because of their profession, business activity, or other reasons; there must be a significant and generalized use nationwide. The use of names, words, signs or advertisement phrases abroad, is not an obstacle for registration of these signs as trademarks in Argentina.
6) Form of the Products
The usual form of the products cannot be registered as trademark. However, a special form applied to a product to distinguish it from other products of the same type, can be registered as trademark.
7) The Natural Color of the Products
The natural color of the products, or just one color applied to them, cannot be registered as trademarks. Nevertheless, the combination of colors has sufficient distinctive power to qualify for trademark registration. Argentine law only refers to the color of the products, but it does not prohibit registration of only one color applied to the label or packaging of a product. Thus, in this latest case, a color can be registered as trademark.
8) Trademarks Capable of Inducing to Error
Trademarks capable of inducing to error with regard to the nature, conditions, merit, quality, manufacturing techniques, function, origin, price or other characteristics of the products or services cannot be registered as trademarks. For example, trademarks that erroneously refer to the quality or characteristics of a product or service, such as "indestructible" for paper towels, fall within this category.
9) Trademarks Identical or Similar to Others
Trademarks identical or similar to other already registered trademarks, or trademarks in process of being registered, cannot be registered to identify the same products or services.
10) Denominations of Local or Foreign Origin
Names of countries, regions, places or geographical areas capable of identifying products from such territories, which also provide the products with special qualities and characteristics, cannot be registered as trademarks. For example, "Champagne" or "Roquefort".
11) Immoral and Against Good Manners Signs
Words, drawings and other signs immoral and against good manners, cannot be registered as trademarks.
12) Official Signs
Letters, words, names, identifications, symbols, that are used or should be used by the Argentine Government, the provinces, municipalities, religious and public healthcare organizations, cannot be registered as trademarks. Also, official signs used by foreign nations and certain international organizations, such as Red Cross, cannot be registered either.
13) Titles of Artistic or Literary Works
Titles of artistic or literary works cannot be registered as trademarks. Consequently, names of movies or books cannot be registered, although periodic publication titles are allowed for registration.
14) Trademarks Prohibited by Special Regulations
Certain laws and regulations do not allow certain trademarks to be registered, such as the Olympic symbols.
15) Names, Pseudonyms, or Portraits of Third Parties
Names, pseudonyms or portraits of third parties cannot be registered without authorization from such third parties or their heirs.
16) Advertisement Phrases without Originality
Advertisement phrases without originality cannot be registered as trademarks.
b. Notorious Trademarks
Notorious trademarks are those known by the public in general, consumers or not of the products or services identified with such trademark, that distinguish a particular product or service. They are usually very successful products or services, which are also extensively publicized.
The Paris Convention, adopted by Argentina, prohibits use of a trademark identical or similar to a notorious trademark in any member state. Also, this convention grants a five-year term to request the nullity of a trademark registered in violation of a notorious trademark. According to the Convention, a notorious trademark holder can also oppose to the registration of an identical or similar trademark, and prevent the use of an infringing trademark.
Even though the Paris Convention provides that a notorious trademark must be such in the country where the notorious condition is invoked, according to TRIPS, member countries must also take into consideration such notorious condition achieved in any other member country.
3. Classes
Trademark classes are classified according to the 8th edition of the Nice Classification. Nevertheless, the National Industrial Property Institute (INPI) has authority to adjust such classification to the changes made by the World Intellectual Property Organization (WIPO). Registration as trademark of every class of a product or service requires the filing of separate registration petitions with INPI.
4. Acquisition and Registration of Trademarks
a. Requirements for Registering a Trademark
1) Novelty
A sign must be sufficiently distinctive to identify a product or service in order to qualify as trademark. The novel condition of a sign is related to its distinctive attributes. A product or service is not novel if it is the name or characteristic of the product or service to be identified as trademark.
2) Specialty
A trademark must not be confused with other registered trademarks, or trademarks in process to be registered with INPI, in order to qualify for registration. A trademark to be registered must be different, and consequently, special.
3) Originality
Only advertisement phrases must comply with this requirement in order to be registered as trademarks. Other trademarks can lack of any originality and still be registered.
4) Legality
A sign must not be illegal under the Argentine Trademark Law to be registered as trademark.
b. Requirements for Being a Trademark Holder
Any person, either individual or corporation, capable of doing business, qualifies under Argentine law to own a trademark. Foreign individuals or corporations can register a trademark, but for doing so they must declare a domicile in Argentina.
1) Legitimate Interest
A trademark registration petitioner must have legitimate interest in doing so. Petitioners must not register trademarks as usual practice of trading with them, or for speculative reasons. The legitimate interest must be proven by the petitioner only in the event someone opposes to the registration. There is no need to prove legitimate interest when the trademark registration petition is filed with INPI.
2) Trademark Registration Process
The trademark registration petition has to be filed with the National Industrial Property Institute (INPI), located in the City of Buenos Aires.
A registration fee must be paid before filing the registration petition.
Once INPI has formally admitted the registration petition, the trademark will be published for one day in the Trademark Bulletin.
Interested parties have thirty days from the publication date, to oppose to such registration. During this period, INPI will conduct a background check and review the viability of the trademark registration.
In the event an opposition to the registration is filed with INPI, the registration petitioner has sixty consecutive days from the publication date to withdraw from INPI a copy of the opposition filing and/or get informed of INPI's observations, if any. Petitioner will have one year, after the sixty-day term mentioned above, to negotiate with the opposing party the withdrawal of the opposition, or to initiate legal actions to overturn such opposition. However, before going to court, petitioner will have to go through a mandatory mediation process. If no agreement regarding the opposition is concluded between the parties after the one year deadline expires, or the legal action somehow is dismissed, the trademark registration petition becomes abandoned.
If INPI has objections to the registration petition, petitioner will have ninety consecutive days, from the expiration of the sixty-day term mentioned above, to respond to the objections and adjust the registration petition to them, if necessary. INPI will decide the registration petition, granting or denying the registration, once the objections are responded or the term to do so expires.
In the event no opposition is filed, or once the opposition is resolved, or having petitioner and the opposing party jointly renounced to their right to go to court to decide the opposition, the proceeding at INPI will continue until it review the case and decide whether to grant the requested trademark registration or not.
Petitioner has the right to appeal to the competent federal civil and commercial court a decision from INPI denying the trademark registration petition.
3) Registration Priority
The petitioner of a trademark registration has priority over such trademark with respect to others who intend to register the same trademark, from the moment the registration petition is filed with INPI. An exception to this rule was established in the Paris Convention. According to this Convention, every trademark registration petitioner in a Convention member country has six-month priority from the date the deposit of such trademark was made, and with respect to other potential registration petitioners of the same trademark in other member countries.
5. Preservation and Loss of Trademark Rights
a. Preservation of Trademark Rights
1) Use Requirement
Trademarks must be used in Argentina during at least five years in order for their holders to preserve their rights over such trademarks and to be able to renew their registration upon expiration. In other words, the owner of a trademark who does not use it for more than five years takes the risk that such trademark registration is declared extinct, or that the registration cannot be renewed after expiration of the ten-year registration period. Use of a trademark can be with our without profit intent.
The person who imports a product identified with a trademark, which is also commercialized in Argentina, also uses such trademark. However, the use requirement is not fulfilled with the use of such trademark abroad.
Trademark holders use their trademarks when they authorize others to commercialize it in Argentina.
2) Trademark Registration Renewal
As explained above, once the ten-year registration period expires, a trademark registration can be renewed indefinitely for identical periods. This is possible as long as the trademark holder used the trademark during at least five years before the registration expired, and informed it to INPI in a sworn statement.
b. Transfer of Trademark Rights
A registered trademark owner can freely transfer such trademark, either for profit or not.
Two or more people can jointly register a trademark, but must also act jointly to license or transfer it.
When a trademark transfer is concluded outside Argentina, formalities of the country where this transaction takes place will govern.
c. Confusion
Trademarks must not be confusing in a way to induce people to purchase or hire a product or service believing they are paying for a different product or service. Trademarks must not confuse the public with respect to the origin of the products or services, or with regard to the product manufacturers or service providers.
Trademark confusion might be valid ground to oppose to a trademark registration petition, nullify a trademark registration, or request criminal sanctions.
Confusion can be visual, audible, or ideological for being the trademarks conceptually identical or similar, such as "Golden Cost" and "Golden Beach".
d. Loss of Trademark Rights
Trademark rights can be lost if any of the following events occur:
1) Expiration of Trademark Registration
Once the ten-year trademark registration period expires, without its holder renewing such registration, the registration becomes extinct. Only in exceptional cases, a trademark holder can "re-register" the same trademark within a limited period of time after registration expired.
2) Nullity
Trademarks can be declared void for not having their registrants the conditions required by law (i.e. be a minor), for having registered signs that do not qualify as trademarks (i.e. the color of a product), and for errors committed during the trademarks registration proceeding.
Trademark piracy, consisting on the registration of a trademark by other than the true owner, who knows who the real owner is, is illegal and such registration can be declared void. Pirated trademarks can be identical or similar to those of the true owner. Trademarks registered abroad can also be valid ground to nullify an identical or similar trademark registered by a pirate in Argentina.
Trademarks registered for the only purpose of being later sold or somehow traded, by someone who usually undertakes this type of activities, can be declared void.
The nullification action prescribes in ten years from the date the void trademark was registered.
3) Expiration
An interested third party can successfully request in court a declaration of expiration ("Caducidad") of a trademark because it was not used during five years prior to such request. Expiration causes the loss of the registered trademark holder's rights, retroactive to the time the expiration petition was filed.
6. Trademark Protection and Legal Actions
A trademark owner has the exclusive right over such trademark, and the right to defend it against those acts that could affect such exclusivity.
Intentional violations to trademark rights can be considered criminal offenses, and unintentional infringements might be valid grounds for civil actions. It is worth mentioning that trademark crimes stated at the Trademark and Trade Name Law can be committed only when registered trademarks are violated. This law does not punish non-registered trademark violations.