眾律國際法律事務所

Introduction:

Language: Spanish 

Capital: Buenos Aires

Area: 2,780,400 km2

Population: 43,417,000 (2015)

Currency: Peso (ARS)

Religion: Catholicism (74%), protestant (8%), other (3%)

Geographical situation: in the southern half of South America. Sharing the bulk of the Southern Cone with its neighbor Chile to the west, the country is also bordered by Bolivia and Paraguay to the north, Brazil to the northeast, Uruguay and the South Atlantic Ocean to the east, and the Drake Passage to the south.

International treaty membership:

Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (January 24, 2008)

WIPO Copyright Treaty (March 6, 2002)

Convention Establishing the World Intellectual Property Organization (October 8, 1980)

Paris Convention for the Protection of Industrial Property (February 10, 1967)

Legislation:        

Law on Trademarks and Designations (Law No. 22.362 of December 26, 1980)

Government Institutions:

National Institute of Industrial Property (INPI)

Type of trademark:

The following may be registered as marks in order to distinguish goods and services: one or more words with or without conceptual content; drawings; emblems; monograms; engravings; patterns; seals; images; bands; combinations of colours applied in a particular place on goods or packaging; wrapping; packaging; combinations of letters and numbers; letters and numbers drawn in a particular way; advertising slogans; distinctive embossments and any other sign with such capacity.

The following trademark types are registrable: trade marks, service marks, trade names and titles of establishment.

Ground for refusal :

The following shall not be considered trademarks and may not be registered:

(a) Names, words and signs that constitute the necessary or usual designation of the good or service to be distinguished or that describe its nature, function, qualities or other characteristics;

(b) Names, words, signs and advertising slogans that have passed into general use before the application to register them;

(c) The shape of a good;

(d) The natural or intrinsic colour of a good or a single colour applied to the good.

The following may not be registered:

(a) A mark that is identical to one previously registered or applied for in order to distinguish the same goods or services;

(b) Marks similar to others already registered or applied for in order to distinguish the same goods or services;

(c) National or foreign appellations of origin. "Appellation of origin" means the name of a particular country, region, place or geographical area that serves to designate a good originating from one of them whose qualities and characteristics are due exclusively to the geographical environment. A name that refers to a particular geographical area for the purposes of certain goods shall also be considered an appellation of origin;

(d) Marks that may mislead as to the nature, properties, merit, quality, processing techniques, function, origin, value or other characteristics of the goods or services to be distinguished;

(e) Words, drawings and other signs that are contrary to morality and decency;

(f) Letters, words, names, badges or symbols that are used or reserved for use by the nation, provinces, municipalities or religious or health organizations;

(g) Letters, words, names or badges used by foreign countries and international organizations recognized by the Government of Argentina;

(h) The name, pseudonym or likeness of a person, without his or her consent or that of his or her heirs down to the fourth degree inclusive;

(i) The designations of activities, including names and company names that describe an activity in order to distinguish goods. However, distinctive abbreviations, words and other signs that form part of such designations may be registered in order to distinguish goods or services;

(j) Advertising slogans that lack originality.

Application content:

Anyone wishing to obtain the registration of a trademark shall file an application for each class in which registration is requested, including his or her name and actual domicile, a special domicile established in the Federal Capital, a description of the mark and a statement of the goods or services to be distinguished by the mark.

Application process:

Once the registration application has been filed, the implementing authority shall, if the legal formalities have been completed, publish the application for one (1) day in the Trademark Gazette at the applicant's expense. Within thirty (30) days of publication, the National Directorate of Industrial Property shall conduct a prior art search in respect of the mark applied for and shall rule on its registrability.

Objections to the registration of a mark shall be filed with the National Directorate of Industrial Property within thirty (30) days of the publication

Objections to the registration of a mark shall be filed in a written notice stating the name and actual domicile of the opponent and the reasons for opposition, which may be elaborated on if the claim is considered in the courts. The notice of opposition shall specify a special domicile within the Federal Capital, which shall be valid for notification of any legal action brought by the applicant.

The applicant shall be notified of the objections raised and any observations on the application.

Refusal:

One year after the notification provided for in article 15, the application shall be declared abandoned in the following cases:

(a) Where the applicant and the opponent do not reach an agreement allowing for an administrative solution and the applicant does not bring legal action within the period indicated;

(b) Where legal action is brought by the applicant but the period of limitation expires.

Rights of exploitation and related delay:

A mark shall be registered for a period of ten (10) years. It may be renewed indefinitely for the same period if it has been used within the five (5) years prior to each expiry for the marketing of a good, the provision of a service or as part of the designation of an activity.

Transfer and conditions:

The transfer of a registered mark shall be valid in respect of third parties once the mark has been registered with the National Directorate of Industrial Property.

A mark may be registered jointly by two (2) or more persons. The owners shall act jointly when licensing, transferring and renewing the mark; any of them may oppose the registration of a mark, institute the proceedings provided for in this Law to defend their mark, and use the mark, unless otherwise stipulated.

Withdrawal and cancellation:

The right of trademark ownership shall be terminated:

(a) on surrender by the owner;

(b) on expiry of the term of validity if the registration is not renewed;

(c) by judicial declaration of the nullity or lapse of the registration.

The following marks shall be null and void:

(a) those registered in breach of the provisions of this Law;

(b) those registered by anyone who, at the time of applying for registration, knew or should have known that the marks belonged to a third party;

(c) those registered for the purpose of marketing by persons who habitually register marks for that purpose.

At the request of a party, a mark shall be declared to have lapsed if it has not been used in Argentina within the five (5) years preceding the date of institution of proceedings, unless the non-use was for reasons of force majeure.

The period of limitation for legal proceedings relating to nullity shall be ten (10) years.

Customs protection:

Resolution AFIP No. 2216/07 created an informative border register. The inscription in the register is voluntary, gratuitous, and valid for two years and is renewable for additional two-year periods if requested by the interested party. In light of this, registered IPR owners who use this system are informed about any imported and exported goods that are not made under the IPR owner’s authorization. Such goods are retained at Customs for a period of three working days, during which the IPR owner or its representative or attorney can physically inspect the retained goods. If the interested party does not appears at Customs and the retaining term expires, Customs service will proceed with regular measures of control that apply to importation and exportation of goods. If trademark infringement is detected or Customs is suspicious of such, it may initiate administrative or legal actions applicable to the specific situation.

Any owner of a registered trademark who becomes aware of the existence of items with an offending mark, may apply to the competent judge for:

(a) seizure of the items;

(b) an inventory and description of the items;

(c) attachment of one of the offending items. Without prejudice to the judge's power to order these measures ex officio, he or she may require adequate security from the petitioner where the judge considers that the petitioner does not have enough funds to cover any penalty he or she may be liable to pay if it is found that the seizure has been requested without entitlement.

The injured party may seek, by whatever means chosen:

(a) the seizure and sale of the goods and other items with the offending mark;

(b) the erasure of the offending marks and designations and the destruction of all items bearing them, if they cannot be separated from them. The judge shall, at the request of a party, order publication of the ruling at the offender's expense if the offender is convicted or defeated in legal proceedings.

Vincent Lagier