The Trademarks Law Review: Argentina
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 consecutive 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. According to amendments to the Trademark Law (Law No. 22,362, established by Law No. 27,444 of 18 June 2018), renewals can be filed six months before or after expiry of the trademark registration.
In respect of opposition proceedings, according to Decree No. 27/2018, if, within three months of notification of an opposition, the trademark applicant does not obtain an amicable withdrawal agreement 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 of whether the trademark can be registered passes to the Trademark Office. The Trademark Office's 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.
On 23 May 2019, the INPI issued Resolution No. 123/2019, which clarifies certain provisions of Regulatory Decree No. 242/19 of the recently amended Law on Trademarks and Designations (Law No. 22,362).
Resolution No. 123/2019 was published in the Official Gazette of 27 May 2019 and entered into force on 3 June 2019, including the following.
i Mid-term declaration of use
In order to maintain a trademark in force, it is mandatory to file with the Trademarks Office a mid-term declaration of use (MTDU) in the following cases:
- Trademarks granted for the first time:
- the MTDU has to be filed for those trademarks granted for the first time since 12 January 2013 and that have completed five years from the registration date; and
- for all these cases, the due date for the filing of the MTDU is of one year counted from the fifth year since the registration date until its sixth year of registration.
- Registered trademarks as a result of a previous renewal:
- the MTDU has to be filed for those renewed trademarks that expire from 12 January 2023 onwards; and
- the due date for the filing of the MTDU in respect of a renewed trademark is of one year. Nevertheless, in the case of renewed trademarks, the deadline for submission is determined counting backwards five years from the due date of the trademark, until its sixth year.
ii Grace periods in respect of the renewal of trademark registrations
The renewal application may be filed six months before or six months after in respect of the due date of the trademark.
iii New deadlines to answer office actions isued by the TMO
Office actions and resolutions, issued by the Trademark Office, are notified by the Official Gazette.
Except the deadlines of the opposition procedure (established by Decree No. 27/2018 and INPI Resolution P-183), all the rest of the deadlines of office actions or resolutions issued by the Trademark Office have to be counted after adding 30 calendar days from the publication of the office action or the resolution.
iv Extension of deadlines in order to answer office actions
The aforementioned resolution also reduced the days of term extensions. Currently, there are two automatic and successive term extensions:
- first: 10 calendar days; and
- second: five calendar days.
On 8 October 2019, the INPI issued Resolution No. 279/2019, which clarifies certain provisions of Regulatory Decree No. 242/19, which amended the Law on Trademarks and Designations (Law No. 22,362).
This resolution has been published in the Official Gazette of 10 October 2019 and entered into force on 9 December 2019.
Resolution No. 279/2019 refers to the following aspects.
Administrative resolution for declaration of nullity of trademarks
It will only proceed against registered trademarks, and it can be requested by third parties or ex officio, as follows:
- for ex officio, it will only proceed in case of detecting a serious defect that cannot be amend in the trademark registration procedure; and
- for third parties, it will only proceed when a damage to a subjective right is invoked by the claimant.
Once the nullity has been requested, either ex officio or by third parties, the owner of the trademark will be notified by an office action, in order to reply and submit evidence at no cost, within a period of 15 business days.
Once the answer of the office action is filed or the term expires, the Trademark Office will resolve.
Administrative resolution for non-use cancellation action
It will only proceed against registered trademarks older than five years, requested by third parties or ex officio.
For ex officio, it will only proceed in cases where that the following conditions are jointly detected:
- the trademark has not been used within the prior five years;
- if the MTDU has not been filed;
- if the trademark is a well-known trademark according the Paris Convention for the Protection of Industrial Property or the TRIPS Agreement; and
- if the owner has an identical trademark in another related class or, if he or she has it, the MTDU has not been filed.
For third parties, it will only proceed when a damage to a subjective right is invoked by the claimant.
Once the non-use cancellation action has been requested, ex officio or for third parties, the owner of the trademark will be notified by an Office Action, in order to reply and submit evidence at no cost, within a period of 15 business days.
Once the answer of the office action is filed or the term expires, the Trademark Office will resolve.
A partial non-use cancellation action may be filed as of 12 June 2023.
On 21 October 2019, the INPI issued Resolution No. 288/2019 and it was published in the Official Gazette of 22 October 2019.
This Resolution refers that as of 15 November 2019, for the filing of trademark application forms, the international classification tool called 'TMclass' and the harmonised European Union Intellectual Property Office database, began to be used mandatory to that purpose.
Consequently, from that date, new trademark applications for 'all class' are no longer accepted.
Furthermore, since the aforementioned date, trademark renewals and opposition forms, as in the case of trademark applications, need to be filed electronically.
Because of the covid-19 lockdown in Argentina, the INPI, through Resolution No. 16/2020 of 17 March 2020, which was published a day later, decided to suspend all the terms that start to run from 12 March 2020, until further notice.
On 17 June 2020, the INPI issued Resolution No. 61/2020, which was published on 19 June 2020.
This resolution makes the following two amendments to the current regulations.
First, it establishes that the office actions; the transfers (of demands); the resolution of the reconsideration resources; complaints of illegitimacy when they are dealt with; interlocutory acts; as well as the acts that resolve the cancellation of a trademark granted; and any other final resolution issued by the National Trademark Office, will be notified by publication in the Trademarks Bulletin.
This Resolution clarifies that the additional term of 30 calendar days must be added to the term of the notification itself, counted from its publication in the bulletin, in order to determine the expiration period with respect to which the notification refers.
As expressly mentioned in the article, there are not included the notifications within the opposition procedure, which was implemented by INPI Resolution P-183/2018.
Likewise, the article also clarifies that this notification procedure, through its publication in the Trademarks Bulletin, will stop being implemented once the INPI regulates the still pending electronic notification procedure (Resolution No. P-250/2018 of the INPI).
Second, Resolution No. 61/2020 also replaces Article 12 of Annex I of INPI Resolution No. P-039/11, which is responsible for regulating issues relating to Transfers of Rights to Trademarks, Patents of Invention, Certificates of Utility Models and Industrial Models and Designs.
Through this modification, Article 12 of Annex I of INPI Resolution No. P-039/11 states that the Office Actions in respect of Transfer of Rights give rise to a single Office Action for the term of 10 business days, with three automatic extensions for three consecutive and equal periods to the aforementioned term.
Likewise, and in relation to what was previously explained, in the case of assignments (or changes of name) in respect of trademarks, the notification of the Office Actions will be made through its publication in the Trademarks Bulletin, for which it has to be added the term of 30 calendar days counted from said publication, as mentioned above.
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 to 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;
- Law No. 27,444 of 18 June 2018;
- Decree No. 27/2018 of 11 January 2018 and INPI Resolution P-183/18 of 19 July 2018;
- Decree No. 242/2019 of 3 April 2019 and INPI Resolution No. 123/2019 of 27 May 2019;
- INPI Resolution No 275/2019 of 10 October 2019;
- INPI Resolution No. 279/2019 of 10 October 2019;
- INPI Resolution No. 288/2019 of 11 Octotber 2019;
- INPI Resolution No. 16/2020 of 18 March 2020;
- INPI Resolution No. 38/2020 of 28 April 2020; and
- INPI Resolution No. 61/2020 of 19 June 2020.
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 domain name registry and ensures the functioning of the domain name system for the country code top-level domain, .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.
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 too.
iii Inter partes proceedings
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.
Hereafter, the trademark opposition procedure has suffered important changes, according to the amendments to the opposition procedures established by Decree No. 27/2018, INPI Resolution P-183 and Law No. 27,444.
Under this new procedure, which entered into force as of 18 September 2018, the applicant and the opponent have to reach an amicable settlement within three months as from the date in which the applicant has been notified of the opposition.
After this period, the Trademarks Office notifies those opponents who have not withdrawn their opposition to maintain the effect of the opposition to the trademark registration by ratifying the same and paying an additional fee 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. It is important to highlight that, if an opposition is not maintained, it will be considered by the Trademarks Office as an informal objection, and the procedure of the trademark application will continue automatically.
Within 15 working days of the conclusion of the aforementioned period, and regardless of whether the opponents have expanded the grounds of their opposition, the Trademarks 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. This time frame is not always complied with by the Trademark Office in view of the present backlog. 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 expiry 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 expiry 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.
It is important to highlight, that the parties are allowed to initate a mediation or conciliation process, or an alternative method of conflict resolution, during all the opposition procedure. Nevertheless, this is the only moment when the parties can suspend the terms of said procedure, reporting it to the Trademark Office, as it was explained above.
Upon expiry of the aforementioned 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 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.
It is important to highlight that the Trademark Office will resolve in respect of the oppositions, and not in respect of the application itself. That is to say, that the Trademarks Office may consider that the oppositions are unfounded, and after that, when the procedure of the trademark application continues, deny the registration of said trademark application (i.e. citing an antecedent that its owner did not previously opposed).
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.
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.
According to the amendments to the non-use cancellation procedures established by Law No. 27,444, although the INPI is currently competent to declare the full or partial expiry of a trademark (in relation to products or services for which it has not been used in the country within the five years prior to the expiry, unless there are causes of force majeure), a resolution of a non-use cancellation action can be appealed to the National Chamber of Civil and Commercial Appeals within 30 business days of the notification of the INPI resolution.
In respect of nullity procedures, also amended by Law No. 27,444, although the INPI is currently competent to declare the nullity of a trademark, this resolution can also be appealed to the National Chamber of Civil and Commercial Appeals within 30 business days of the notification of the INPI resolution.
Trademark infringement lawsuits in Argentina fall within the federal judicial jurisdiction. Both civil and commercial actions can be filed by the trademark owner.
Since 18 September 2018, with the entry into force of Decree No. 27/2018 and INPI Resolution No. P-183/18, pretrial mediation is optional for parties.
ii Pre-action conduct
Since 18 September 2018, with the entry into force of Decree No. 27/2018 and INPI Resolution No. P-183/18, pretrial mediation is optional for parties.
iii 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.
iv 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 SA de Cerámica y Metalurgia v. Derpla SA2 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 in the form of a monetary payment to the injured party.
Other enforcement proceedings
As well as 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 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.
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.
Recent and pending cases
In the case InvertirOnline com Argentina SA v. Stamati, Pedro Alfonso S/ Medidas Cautelares (File No. 9877/2018), the plaintiff, who was the owner of the trademark registration 'invertirOnline.com' and the domain names www.invertironline.com.ar and www.invertironline.com, sought the preventive cancellation of the domain name www.invertionline.com (note that it only differed from that of the plaintiff by the letter 'R') registered in the name of the defendant in the United States and the annotation in his favour.
In the first instance, the court declared itself incompetent to resolve the petition, while the Chamber, on 22 May 2019, overturned the ruling, establishing that the Argentine judge is competent to resolve a conflict caused by the use and registration of a domain registered in another country that would affect a registered trademark in Argentina.
On 23 January 2020, the INPI issued Resolution No. 9/2020 and it was published in the Official Gazette of 28 January 2020.
This Resolution refers that, as of the aforementioned date of its publication, it began to be implemented that administrative notifications about industrial designs and models, will be received at the Electronic Legal Address.
Even though other administrative notifications are still done by bulletins or to the physical legal address, the INPI is developing a new virtual platform for electronic notifications in respect of trademarks, patents, utility models, and other procedures such as transfer of technology, in order to replace the aforementioned ways of notifications, for electronic notifications.