The trademark registration procedure in Argentina begins with the filing of an application with the Trademark Office, a department within the National Institute of Industrial Property (INPI). Once the trademark application is filed, the Trademark Office conducts a formal examination to determine whether the filing requirements are complete and adequate. If they are, the trademark application is published once only in the Trademarks Bulletin. Once the application has been filed, third parties have 30 working days to file an opposition.
Once any oppositions have been overcome (or if no opposition is filed by third parties), the Trademark Office carries out a substantive examination to determine whether the trademark application should mature into registration.
After this last examination, the Trademark Office issues a certificate of registration, which is valid for 10 years, and which can be renewed for an identical term.
As from 18 September 2018, Decree No. 27/2018 enters into force. Pursuant to this Decree, if within three months of notification of an opposition the applicant does not obtain its amicable withdrawal through negotiations with the opponent (generally consisting of agreements regarding restrictions or exclusions of the products or services for which the trademark application has been filed, and the issuance of a letter of undertaking, if necessary), authority for the decision as to whether the trademark can be registered passes to the Trademark Office. The Trademark Office decision may only be appealed by direct appeal to the National Chamber of Federal Civil and Commercial Appeals within 30 working days of notification of the decision.
II LEGAL FRAMEWORK
The following are the most relevant pieces of legislation related to trademarks in Argentina:
- Trademark Law No. 22,362 of 26 December 1980 (the Trademark Law);
- Trademark Law Regulatory Decree No. 558/1981;
- Paris Convention for the Protection of Industrial Property (Stockholm Act, Articles 13–30, approved by Law No. 22,195 of 17 March 1980, and the Lisbon Agreement, approved by Law No. 17,011 of 10 November 1966);
- World Trade Organization TRIPS Agreement, approved by Law No. 24,425 of 7 December 1994; and
- Decree No. 27/2018 and INPI Resolution P-183/18.
The main body responsible for the trademark regime in Argentina is the INPI, which is in charge of the protection of industrial property rights, including trademarks, patents, industrial models and designs, and transfer-of-technology licensing agreements.
The General Inspectorate of Justice (IGJ) has the function of supervising the majority of companies limited by shares, limited liability companies, foreign companies that carry out in Argentina the normal exercise of acts included in their stated corporate purpose, companies that carry out capitalisation and savings operations, and civil associations and foundations, insofar as they establish their legal domicile in the city of Buenos Aires. The IGJ records in the public registry the details required by law of shareholding companies, non-shareholding companies, companies incorporated abroad, civil associations and foundations. It is also responsible for the protection of company names.
The National Copyright Office is the governmental body in charge of copyright protection.
The Network Information Center Argentina (NIC.ar) is in charge of the domain name registry and ensures the functioning of the domain name system for the country code top-level domain (ccTLD) .ar.
iii Substantive law
The legal basis for the protection of trademarks is to identify products and services and provide consumers with information about these and their origin.
In Argentina it is not mandatory to register a trademark; however, the exclusive right on a trademark is acquired only through its registration with the Trademark Office.
The rights that the registration of a trademark confers in Argentina are as follows:
- ownership of the trademark (in relation to the products or services covered by the registration);
- the right to use the trademark exclusively;
- the right to assign ownership of the trademark to third parties;
- the right to license the use, exclusively or not, in favour of third parties;
- the right to prevent unauthorised third parties from using the trademark;
- the right to oppose registration at the Trademark Office of trademarks confusingly similar; and
- the right to request to the competent Argentinian courts the nullity of later trademark applications that are confusable with the trademark that is already registered.
The Argentinian legal system also recognises as the holder of a domain name a user who obtains a registration for the domain at NIC.ar. This gives the user ownership of the domain name and grants the right to prevent any other user from registering an identical domain name.
III REGISTRATION OF MARKS
i Inherent registrability
Upon submission of the application, the Trademark Office issues a preliminary report, accepting (or refusing) the application for publication purposes. The application will be declared abandoned should there be a failure to file a timely response to formal objections. If the Trademark Office finds that the legal formalities have been complied with, it will publish the application for one day only in the Trademarks Bulletin.
Oppositions to the registration of a trademark must be filed at the Trademark Office within 30 working days of publication of the trademark.
ii Prior rights
Priority must be claimed by submitting a separate application form at the same time as filing the trademark application. A non-legalised certified copy of the priority document, with its public translation, must be filed within 90 working days of the filing date.
iii Inter partes proceedings
As mentioned in Section III.i, oppositions to the registration of a trademark must be filed at the Trademark Office within 30 working days of publication of the trademark in the Trademarks Bulletin.
The trademark applicant is given formal notice of any oppositions filed by third parties and of any official objections that may have been raised.
As from 18 September 2018, the entry into force of Decree No. 27/2018 and INPI Resolution No. P-183 establishes a new procedure, under which the applicant and the opponent have to reach an amicable settlement within three months of the applicant being notified of the opposition.
After this period, the Trademark Office notifies those opponents who have not withdrawn their opposition to maintain the effect of the opposition to the trademark registration by paying the corresponding fees within a non-extendable period of 15 working days, and, within that same period, to extend the grounds for their opposition with additional arguments for their purported right and offer the evidence they deem relevant. Within 15 working days of the conclusion of this period, and regardless of whether the opponents have expanded the grounds of their opposition, the Trademark Office notifies the applicant of every opposition that is still effective and of any additional arguments, and the applicant is given a non-extendable period of 15 working days to individually reply to each opposition and provide the evidence the applicant deems appropriate.
The evidence filed by both parties is considered jointly and decided after this 15-day period by the Trademark Office. Once the parties have been notified of this decision, they have 40 working days to submit their evidence regarding the oppositions.
Upon submission of the evidence or expiration of the submission period, and before the Trademark Office issues a decision on the appropriateness of the opposition, provided there are no previous procedural issues to be resolved, the parties are given a common period of 10 working days to submit a voluntary writ containing their final arguments.
Within this 10-day period, the parties may report that they have initiated a mediation or conciliation process, or an alternative method of conflict resolution, offering the necessary proof of this process. This report is submitted in the form of a joint writ and, in the event that the parties agree to mediation or a similar process, the 10-day period is suspended for both parties for a period of 30 working days as of the submission of the joint writ.
Within this 30-day period the parties must finalise the agreed mediation, conciliation or alternative method of conflict resolution. Subsequent to this 30-day period, a new 10-working-day period automatically starts running, with the same effect and scope as the suspended one. If the parties have resolved the conflict by way of the chosen process, this is reported to the Trademark Office before expiration of the specified term, along with evidence of this result. In the event that the parties resolve the dispute by way of the chosen process, the Trademark Office will not issue a decision on the dispute, given that the parties have already resolved the matter themselves. However the parties' agreement will not bind the Trademark Office to a particular outcome in respect of the granting of the trademark application.
Upon expiration of the 10-day term, if the case has not been previously dismissed, the Trademark Office issues its decision regarding any oppositions to the trademark application that are still in effect, including stating whether or not these oppositions were well-founded.
To appeal the Trademark Office's final decision, a direct appeal must be made to the Trademark Office within 30 working days of the notification of the decision. The appeal must be accompanied by payment of the relevant administrative fees.
The Trademark Office must then submit the filed appeal, together with a copy of the related proceedings, within 10 working days, to the opponent, and to the National Federal Chamber of Civil and Commercial Appeals of Buenos Aires, which decides the civil matter between the applicant and the opponent.
Once the matter of the opposition is agreed or otherwise finalised, the Trademark Office, where possible, decides, by way of a new administrative procedure, whether to grant or deny the trademark application.
If a decision granting registration is made, the corresponding certificate is issued to the applicant.
As this new procedure pursuant to Decree No. 27/2018 and INPI Resolution No. P-183 is not in effect at the time of writing, we understand that there are likely to be further amendments to ensure the procedure provides fast and efficient resolution of third-party opposition to trademark applications.
Decisions refusing registration are subject to appeal to the Civil and Commercial Federal Chamber of Appeals. The appeal shall be handled in accordance with the rules for ordinary proceedings and must be logged before the INPI within 30 working days of notification of the adverse decision.
If this action is not brought within the established period, the trademark application shall be declared abandoned.
IV CIVIL LITIGATION
As already stated, trademark infringement lawsuits in Argentina fall within the federal judicial jurisdiction. Both civil and commercial actions can be filed by the trademark owner.
ii Pre-action conduct
As of 18 September 2018, with the entry into force of Decree No. 27/2018 and INPI Resolution No. P-183/18, pretrial mediation will be optional for the parties.
Causes of action
Article 4 of the Trademark Law states that the 'property of the trademark and its exclusivity of use shall be obtained through registration'. Thus, the owner of a trademark can defend it from the following actions in Argentina.
- Counterfeiting: understood as the exact reproduction of the registered trademark.
- Fraudulent imitation: understood as the action of copying a registered trademark causing confusion for consumers.
- Use of goods or services that are counterfeit or fraudulently imitated or belonging to a third party, without authorisation.
- The sale or commercialisation of a trademark that is counterfeit or fraudulently imitated or belonging to a third party, without authorisation.
- The sale or commercialisation of products and services by including a trademark that is counterfeit or fraudulently imitated.
iii Conduct of proceedings
It is difficult for the owner of a trademark to prove the real damage caused by the marketing and selling of a counterfeit product or service. To that end, the judge will have to establish the causal relationship of the sale of the counterfeit product or service to the damage, and assess the possible award of damages.
The award of damages cannot be requested if three years have elapsed since the counterfeiting took place, or one year after the counterfeiting became known.
Regarding the amount of the claim, it was stated in the case of Ferrum S.A. de Cerámica y Metalurgia v. Derpla SA, Chamber III, 6 June 2010 that the injured party can request the amount of the claim to be fixed at whatever is shown by the evidence. (Although the case refers to an industrial model, the ruling can also be applied to trademark disputes.)
The Argentinian legal system states that anyone who causes damage must repair it. This also applies to trademark matters.
To obtain a damages award, the judge will have to evaluate the circumstances at the time the infringement took place, including the nature of the infringing products, the characteristics of the consumers, the extent of the owner's income from sales, the reputation of the owner's trademark, and the money invested in advertising, among other things.
Damages awards in trademark cases are made by payment of an amount of money to the injured party.
V OTHER ENFORCEMENT PROCEEDINGS
As well as the above-mentioned award of damages, the owner of a trademark may file an action for recovery of ownership with the aim of regaining control of the trademark.
In cases of piracy, a nullity action is more appropriate (i.e., the registration of a pirated trademark would be ineffective). Nevertheless, the owner of the genuine trademark may choose between an action for recovery of ownership, as stated above, or a nullity action.
The counterfeiting of trademarks is punishable by a maximum of two years in prison, although a prison sentence is unlikely unless other criminal offences can be proven. However, criminal offences are common, since trademark counterfeiting usually involves tax evasion, money laundering and illicit association.
When a trademark owner wishes to stop counterfeit goods, he or she must apply to the criminal courts. However, companies normally also seek an award of damages to cover expenses incurred, which must be obtained in the civil courts. A civil action must be filed, and if the damages are sufficiently high, this may serve as a deterrent to anyone considering committing similar crimes.
Note that the Argentinian tax authorities have a customs alert system, consisting of a pre-emptive trademark information system that identifies at the time of registration destinations for which importers or exporters do not hold intellectual property rights for a particular merchandise, and warns the holders to identify whether the merchandise being imported or exported is counterfeit.
VI RECENT AND PENDING CASES
i Unregistered trademarks
On 23 November 2017, in Tonelli María Elena v. Sánchez Adrián Alberto, the Federal Court of Appeals of the City of Rosario declared a trademark registration null and void because the owner of the trademark knew or should have known that it already belonged to a third party.
In this case, María Elena Tonelli sued Adrián Alberto Sánchez to have the trademark 'Tonelli' declared null. The plaintiff argued that she had been marketing and selling soda water using the aforementioned trademark since the 1960s, although the trademark was not registered, and that Mr Sánchez had been commercially linked with Miss Tonelli. Consequently, the Court of Appeals found that the registration application for the trademark 'Tonelli' in the name of Mr Sánchez had been made in violation of Article 24(b) of the Trademark Law: 'The following trademarks shall be null and void . . . those registered by anyone who, at the time of applying for registration, knew or should have known that the trademarks belonged to a third party'. Note that in Argentina trademark registration is not mandatory for the use of a trademark to market and sell goods or services. Nevertheless, it is advisable always to register a trademark to avoid issues like these.
ii Necessary designations
On 15 February 2018, in Telecom Argentina SA v. Administradora de marcas RD S de RL de CV, Chamber III of the Court of Appeals in Civil and Commercial Matters settled a lawsuit in connection with the withdrawal of an opposition filed by the defendant against an application for the trademark 'Carga Rápida' ('Quick Charge') in International Trademark Class 38.
The defendant argued that the phrase described the function of the service for which the trademark was intended to be registered in relation to mobile phone services, and that this word mark should be considered a generic term, and thus non-registrable as a trademark.
At first instance, the judge found in favour of the defendant and held that the trademark was descriptive of the service to be provided; consequently the trademark could not be registered. Nevertheless, this judgment was appealed by the plaintiff.
The Court of Appeals in Civil and Commercial Matters held that none of the words associated with the trademark registration application were characteristic of a necessary designation for the product or service to be distinguished. In this case, it held that 'Quick Charge' could refer to many things (for example, charging batteries, or firearms with rapid discharge), and so could not be considered a necessary designation, particularly as telecommunications services are constantly changing according to technological developments, which results in new coinages and linguistic modifications to represent these changes.
In addition, the Court of Appeals noted that the Trademarks Office had already granted many trademarks using the term 'carga' in Class 38.
Consequently, the Court resolved that 'Quick Charge' could be registered as a trademark.
iii Non-registrable signs
On 9 June 2017, in Simonetti Lando v. Tidy SA and others, the Court of Appeals in Civil and Commercial Matters ruled on the registrability of a trademark application for 'ARGENTINA CAPITAL MUNDIAL DEL POLO' ('ARGENTINA WORLD CAPITAL OF POLO') in International Trademark Class 18.
Mr Lando Simonetti filed a lawsuit against Tidy SA to have the opposition filed by the defendant against this trademark application declared ill-founded.
The grounds of the opposition filed by Tidy SA were that the trademark application lacked distinctiveness because it was a publicity phrase that had passed into common use, and as such was in contravention of Articles 2(b) and 3(j) of the Trademark Law.
The defendant also asserted that the aforementioned trademark refers to the necessary designation of a sport (polo); to a designation of origin (Argentina); to a trademark designation that suggests an international characteristic; and, finally, to a capital, in the sense of the place where a sport takes place.
Additionally, the defendant also argued that the advertising phrase sought by Mr Lando Simonetti possessed all the characteristics of non-registrable signs, and as such expressly prohibited by the Trademark Law. He also added that Mr Simonetti wanted the consumer public to relate his trademark to Argentinian polo, unjustifiably benefiting from the worldwide prestige that Argentina has in this sport.
He also argued that the Trademark Law allows the registration of only original advertising phrases, and, according to the plaintiff, not only did the phrase lack this requirement, but also the phrase had passed into common use.
Likewise, the defendant emphasised that the interests of the plaintiff were contrary to the interests of his competitors, and relating his products to Argentinian polo could affect the prestige of Argentina in relation to the practice of this sport, which would constitute an act of unfair competition.
The judge at first instance dismissed the claim filed by Mr Simonetti, declaring the oppositions adduced by Tidy SA to be well founded. However, the plaintiff appealed this judgment.
The Court of Appeals in Civil and Commercial Matters, when deciding on this issue, offered interesting trademark concepts worth mentioning.
Regarding the main function of a trademark, the court considered it necessary to remember that the main function of a trademark is to 'identify the product or service with the specific purpose of implementing its commercialisation in the market. This role of identification–dissemination is the basis of the existence of any kind of trademark sign.'
The Court of Appeals also established that
an interesting issue is the possibility of using a trademark 'slogan' that consists in a phrase normally intended for advertising and that contains within it a term that is actually the one that has distinctive strength and refers to the product or service. The phrase draws the attention of the public, in particular for its originality, cadence, etc. . . . It aims at wider dissemination of the product or service through the indirect effect whereby hearing the words used in the slogan . . . evokes the product or service mentioned. The use of advertising phrases is very widespread and sometimes, when the slogan has acquired sufficient diffusion, the phrase is used omitting the term that has distinctive force.
The court also mentioned that 'the advertising purpose of the trademark slogan has a great influence on the trademarks of services', adding that the latter is not the case for the phrase 'ARGENTINA WORLD CAPITAL OF POLO', since the Court of Appeals considered the phrase lacked originality in all the words that composed it.
The Court added that a phrase is creative when 'without producing confusion with respect to others, it has aptitude for differentiation and association with certain goods or services', and that the Trademark Law 'affords it particular protection, unless it makes misleading projections about the nature or properties of the product or contains elements that are detrimental to the products of competitors'.
The Court's decision also established that the trademark application for
'ARGENTINA WORLD CAPITAL OF POLO' contained words in common use in combination with a certain meaning that has a potentially misleading relationship to some of the products included in Class 18 . . . for example, a “whip” . . . so if the registration were allowed it would create a disadvantage for competitors marketing and selling the products covered in the aforementioned class, in that the words constitute terms that have an evocative value of certain characteristics expected or indicative of the products, to distinguish umbrellas, canes or whips from the practice of polo, and others
Thus, for the aforementioned reasons, the Court of Appeals in Civil and Commercial Matters dismissed the plaintiff's complaint, confirming the non-registrability of the trademark application for 'ARGENTINA WORLD CAPITAL OF POLO' in Class 18.
The main developments relate to the new opposition procedure, which is effective from 18 September 2018, as mentioned before.
According to this new procedure, the Trademark Office will now decide about oppositions, in contrast with the previous regime. Previously the parties had to resolve the conflict themselves, and the applicant could only file an action with the federal courts to have the opposition declared ill-founded after a year had elapsed, and after mandatory pretrial mediation.
Under the new regime, the parties will have the opportunity to resolve the conflict themselves, but only within the relatively short period of three months. After that, the Trademark Office assumes charge of resolving the matter. As was mentioned above, the parties may subsequently appeal the decision issued by the Trademark Office and a judicial body will settle the civil dispute between the applicant and the opponent.
1 Santiago R O'Conor is a managing partner and Agustin Castro is an associate at O'Conor & Power.