TRADE

							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.

1
 Fraudulent imitation of a non-registered trademark is considered fraud according to article 159 of the
Argentine Penal Code.
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.

a. Trademark Crimes
Certain conducts that violate trademark rights are considered crimes, such as the following:

1) Counterfeiting

The counterfeiting crime is committed when a registered trademark is reproduced in whole or in
part, without authorization from the trademark holder, and an identical imitation of the registered
trademark is obtained. For example, manufacturing identical labels or packaging without
authorization can be counterfeiting. Also, those who stamp trademarks on products are also guilty
of counterfeiting. The fact that the trademark holder is not using the trademarks, or had not used
them, at the moment the counterfeiting crime was committed is not a valid defense.
In order for this crime to be committed, it is not necessary that the entire trademark is reproduced,
it is sufficient that the most relevant or distinctive part of it is copied.

Adding new elements to a registered trademark is also counterfeiting, unless the new elements are
relevant enough as to create a new and distinctive trademark, incapable of being confused with
the registered trademark.

There is case law where the single fact of possessing counterfeited materials, such as labels, was
considered irrefutable proof of having committed the crime of counterfeiting.

If a third party was hired to manufacture trademarks, and intentionally exceeds the number or
limit authorized by the trademark holder, he/she commits the crime of counterfeiting.

2) Fraudulent Imitation

When a third party imitates a registered trademark with intention to cause confusion, such third
party commits the crime of counterfeiting punished by the Trademark and Trade Name Law. This
crime involves the reproduction of a registered trademark, that it is not identical to the registered
trademark but it is capable of causing confusion in the public. 2

3) Application of an Illegal Trademark to a Product

Those who stamp, stick, or somehow apply to a product a counterfeited trademark, a fraudulently
imitated trademark, or an original without the trademark holder's authorization, commit a
trademark crime.

4) Use of trademarks in Advertising

It is legal to advertise that a product can be used in combination with others identified with
trademarks belonging to third parties. For example, the phrase "Auto-parts for Ford Automobiles"
advertised by a store that sell auto parts. However, following the example, the ads must not
confuse the public by inducing them to think that the auto-parts and the cars belong to the same
trademark owner. In other words, that both products are Ford. This would be illegal.

5) Use of Trademarks Belonging to Others to Publicize Services


2
 The crime of fraudulent imitation of registered trademarks is prohibited by article 31 of the Trademark
and Trade Name Law, while fraudulent imitation of non-registered trademarks is prohibited by article 159
of the Penal Code related to fraud.
The explanation given regarding the use of trademarks to publicize products, also applies to
advertisement of services. It is legal to publicize a service mentioning a trademark that belongs to
other person or corporation if the person who provides the service specializes on advertised field.




6) Refilling

Refilling a container or package with a registered trademark on it, either with products belonging
to the person doing the refill or to others, is a trademark crime.

7) Sale of Refilled Products

The sale of refilled products is a trademark crime.

8) Offer and/or Commercialization of Infringing Trademarks or Trademarks Belonging to Others
without Authorization

Those who offer for sale and/or commercialize materials, such as labels, containing counterfeited
trademarks, trademarks fraudulently imitated or belonging to others, who did not authorize such
conducts, and/or commercialize products or services displaying such trademarks, commit a
trademark crime.

9) Commercialization of Infringing Foreign Products

It is illegal to sell products manufactured abroad that infringe trademarks registered in Argentina,
when the holders of the foreign and local trademarks are different people or corporations.
However, when the holders are the same person or corporation, no trademark crime is committed.

10) Counterfeiting and Fraudulent Imitation of Non-Registered Trademarks

The Argentine Trademark and Trade Name Law does not punish counterfeiting or fraudulent
imitation of non-registered trademarks. However, non-registered trademarks owners can find
legal protection on the Penal Code provisions that punish those who implement fraudulent
schemes, ill-intended suspicions or any other unfair advertisement mean, to appropriate clientele
belonging to other commercial or industrial businesses (Article 159 of the Penal Code).

b. Comparative Advertising

Comparative advertising, consisting on mentioning trademarks that belong to others, without their
authorization, to compare them with the advertiser's trademark, is no necessary per se. However,
there is case law where it was decided that naming a trademark in denigratory terms in an ad,
without permission from the trademark holder, and making false comparisons, is illegal. It is
worth mentioning that there is no uniform case law on this subject.

c. Legal Actions

Criminal and civil legal actions are available to trademark holders to protect their rights.
1) Criminal Legal Actions

Criminal actions for trademark violations are public. This means that legal actions can be initiated
not only by interested parties, but also by prosecutors and judges who are informed of the
commission of such crimes.

2) Penalties

Penalties for trademark crimes range from three months up to two years of imprisonment, plus the
possibility of fine. Those who commit a trademark crime will be exempted to serve time in
prison, even though they are found guilty, because to serve time the maximum penalty stated in
the law for the imputed crime must exceed three years of imprisonment.

Interested parties can request a court order to seize and sell merchandise and other materials
displaying infringing trademarks, as well as the destruction of the infringing trademarks,
designations, and any other materials containing them, when they cannot be separated from the
infringing sings.

3) Civil Legal Actions

Interested parties can file civil actions to request suspension on the use of infringing trademarks,
or the offer and/or commercialization of products or services identified with such infringing
trademarks. Plaintiffs can also collect money damages.

4) Civil Remedies

A favorable civil court ruling in a trademark infringing case might order the seizure and sale of
products containing infringing trademarks, the destruction of the infringing trademarks, if
necessary, and money damages if requested by plaintiff and applicable to the case. The final
ruling can be published in the media if plaintiff requested it in the complaint.

5) Preliminary Measures in Criminal and Civil Cases

According to Argentine law, registered trademark holders, and even a competent judge or
prosecutor who were informed of a the existence of objects identified with infringing trademarks,
can obtain an embargo of such objects, their inventory and description, and seizure of one of the
objects. The judge can request plaintiff to submit a bond before ordering preliminary measures.

6) Trademark Registration Recovery Action

When a trademark owner authorizes a third party to register a trademark on the owner's behalf,
and the third party later does not transfer such trademark to the true owner, the latest has the right
to recover the trademark in court.

7) Border Measures

In the event a trademark holder has reasons to suspect that infringing merchandise is about to be
imported into Argentina, and the holder can prove it to the authorities, the holder will have the
right to oppose to that importation. The possibility that the merchandise to be imported could be
confusing with the local holder trademarks is sufficient ground to oppose to the importation.

Argentine authorities can request the petitioner of these measures to submit a bond to cover
possible damages.

Also, authorities can act without formal petition from an interested party in the event they are
informed of the possible importation of infringing merchandise.
In addition to prohibit the importation of infringing merchandise, authorities can order its
destruction.