Argentina: A Closer Look at Trademark Law Reforms

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In summary

Argentina’s Trademarks Law, first passed in 1980, has been reformed considerably in recent years. As Argentina becomes an increasingly significant destination for trademark prosecution, applicants need to be fully conversant
with the relevant laws and regulations.

Discussion points

  • Trademark registration procedure
  • Requirements for maintaining registration
  • Official measures and responses to infringements

Referenced in this article

  • Law No. 22,362 of 26 December 1980 (B.O.2/1/81) (Trademarks Law), amended by Law No. 27,4444 of May 2018 and Decree 242/2019
  • Trademark Office Resolution P-183 of 17 September 2018
  • Afrika Kueros SA v Sacatex SRL and Kantor SAIC
  • Naturella SA v California Shoes SRL

Law No. 22,362 of 26 December 1980 (Trademarks Law) was amended by Law No. 27,444 of 30 May 2018 and Decree 242/2019, regulating the Trademarks Law and its amendments. The Trademark Office (TMO) examiner has also issued a number of resolutions regarding the new registration procedure.

The TMO is a department within the National Institute of Industrial Property (INPI).

General principles

Despite the amendments and changes to the Trademarks Law, the first to file system, whereby priority is granted to the first to file and trademark rights are acquired by registration, has been maintained and still is a general legal principle.

Article 4 of the Trademarks Law clearly establishes that the ownership of a trademark and the exclusivity of use are obtained by registration.

The following may be registered as trademarks to distinguish products and services, as set out in article 1 of the Trademarks Law: one or more words, with or without meaning; drawings; emblems; monograms; engravings; images; bands; combination of colours applied to a particular place on products or containers; wrappers; combinations of letters and numbers; letters and numbers that have a special design; advertising phrases; and, most importantly, any other distinctive sign.

In addition, Regulating Decree No. 242/2019 stipulates that shapes and colours that have acquired distinctiveness, and the natural shapes or unusual shapes of products, may also be registered as trademarks.

Registration of a trademark

Trademark applications are published, typically within two months of filing, to enable objections to be raised. Trademark Office Resolution P-183 of 17 September 2018 establishes the procedure for third-party opposition to a trademark application.

Any third party with a legitimate interest has 30 days from the publication date to file an opposition. This term is not extendable.

If there is third-party opposition, the TMO will notify the applicant and grant a term of three months to reach a settlement with the opponent. If no amicable settlement has been achieved within the three months, the TMO will notify the opponent and grant a non-extendable term of 15 working days to ratify its opposition and initiate an administrative lawsuit by filing additional arguments to sustain the opposition. This process involves the filing further arguments, evidence and closing arguments.

The applicant and opponent may continue to negotiate a settlement during the opposition process. In view of this, the three-month term provided by the TMO does not have a fixed expiry date for a settlement to be reached.

After the opponent has ratified its opposition, the TMO will notify the applicant, granting a non-extendable period of 15 working days to file a response and evidence. The TMO will then grant a non-extendable period of 40 working days for both parties to produce evidence. As documentary evidence must be filed by the parties with their respective claim and responses, non-documentary evidence must be produced during the 40 working days. Once the evidence stage is completed, each party has 10 working days in which to file final arguments.

A settlement may be reached at any time during the opposition procedure. If a settlement is reached or if the case is settled through mediation or conciliation, the parties must notify the TMO; however, the TMO is not bound by the terms of the settlement.

If the opposition is not ratified by the opponent, it will be considered by the TMO as an informal objection, in which case the TMO examiner will issue a decision on the merits of the opposition.

The TMO’s decision may be appealed before the Federal Court of Appeals within a non-extendable term of 30 working days of notification of the decision. The possibility of appealing a TMO decision applies only if the opposition has been contested, not if it is not contested, where the TMO will nevertheless have to issue a decision.

For many years, oppositions between parties were decided by the courts if an amicable settlement could not be reached. The criteria used by the TMO examiners have tended to follow similar criteria, which are as follows:

  • When comparing trademarks, the analysis should focus on the similarities and not the differences between them.
  • Similarities in one aspect of the comparison (eg, phonetical, visual or conceptual) is sufficient to establish that the trademarks cannot coexist.
  • Trademark confusion occurs when a new trademark triggers a recollection of an existing trademark, making the consumer mistakenly choose the later trademark only because of this memory; however, the consumer must be able to remember a trademark for confusion to occur.
  • Consumers mostly recall the beginnings of words.
  • Indirect confusion is a sufficient ground for a trademark to be rejected.
  • The mot vedette (ie, compound of a trademark with immediate significance) can be the most distinctive part of a trademark. Once such a compound has been identified, it can be the basis to reject an application when carrying out a comparison.
  • A trademark can be rejected because of the fact that the granting of a similar trademark can provoke the dilution a registered trademark in a given class.
  • Direct confusion entails the consumer who is purchasing a product being convinced that he or she is buying a different product.
  • Indirect confusion entails the consumer purchasing a given product on the understanding that the product belongs to a given producer, when it was actually manufactured by a third party.
  • The main goal of the Trademarks Law is the protection not only of the trademark owners but also consumers and sound commercial practices.
  • Registered trademarks must be protected.
  • Legitimate interest is a necessary requirement to prevent the registration of trademarks with unlawful purposes or with the intent to confuse consumers.
  • The owner of a trademark has the right to exercise its exclusive rights over its trademark.
  • Notorious trademarks require a greater level of protection. Therefore, the speciality principle, which establishes that a trademark is protected only in connection with the product or service for which this was registered, does not apply.

User requirement

Under the first-to-file system, there is no prior use requirement to file a trademark application nor to obtain a trademark registration; however, there are requirements for users in respect of maintaining a registration and avoiding a non-use cancellation action.

Non-use cancellation action

A third party, with a legitimate interest, may file a cancellation action if a trademark has not been used in Argentina for five years, counted from the date the cancellation action is filed, other than for unforeseeable circumstances.

Partial non-use cancellation action

As of 12 June 2023, it is possible to file a partial non-use cancellation action. A cancellation action will not proceed if the trademark has been used on certain products or services, or as part of the rendering of a service relating to a product or service, even if in different classes or if it is part of the designation of a related activity.

Non-use cancellation actions are handled and decided by the TMO. The decision may be appealed before the federal courts within 30 days of the date of notification.

To date, the TMO has not decided on any non-use cancellation actions, so there are no cases from which to establish the criteria to be used by the TMO.

Renewal application

To renew a trademark registration, the trademark should have been used in Argentina within the five years prior to expiry of the registration. The use of the trademark on any product or service is sufficient to renew a trademark registration in any class. There also is a six-month grace period to file a renewal application after expiry of the registration, subject to payment of an additional fee to the TMO.

Mid-term declaration of use

A mid-term sworn declaration of use must be filed in all trademark registrations between the fifth and the sixth year of registration.

Failure to make such a presentation will lead to a presumption of the lack of use of the trademark. Any renewal application will not be considered until a declaration has been duly filed and the relevant TMO fee for late filing has been paid.

Cancellation action

The Trademarks Law provides that a trademark registration is invalid for two reasons.

The first is if a trademark application is granted in contravention of the provisions of the Trademarks Law. These cases are handled and decided by the TMO. Decisions may be appealed within 30 working days of notification of the decision.

If a trademark is registered by someone who knew, or should have known, that the trademark belonged to a third party, the registration will be invalid. This is an exception to the first-to-file system, which sanctions ‘pirate’ trademark registrations.

Furthermore, it has long been the practice of the federal courts to declare the nullity of trademarks that are registered by third parties in bad faith.

Trademark infringement

The Trademarks Law specifies the types of acts that are considered to infringe a registered trademark:

  • the false or fraudulent imitation of a registered trademark or designation;
  • the use of a registered trademark or a designation that has been fraudulently copied, or one belonging to a third party, without the third party’s authorisation;
  • an offer for sale or the sale of a registered trademark or a designation that has been fraudulently copied, or one belonging to a third party, without the third party’s authorisation; and
  • an offer for sale or the sale or marketing of products or services with a counterfeit or fraudulently copied trademark.

Anyone found to have carried out any act that infringes a trademark may be punished by imprisonment for between three months and two years, and may also be fined.

The Trademarks Law also provides for specific actions against trademark infringement. An action known as a precautionary measure may be used to obtain evidence of an infringement. The court will authorise a court officer to visit the domicile of the individual suspected of an infringement, to draw up an inventory and to seize one of each of the infringing products.

Civil court action for cessation of use

Prior to filing a civil action to obtain the cessation of use of a trademark, a lawyer must complete a compulsory pretrial mediation. This is an opportunity to try to negotiate a settlement.

The Trademarks Law provides for such a civil action to be initiated without the proper consent of its proprietor.

When such an action is filed, the plaintiff may demand that the defendant post a bond if the improper use of a trademark is not discontinued.

Only in default of a real security, the plaintiff may request that the use of the trademark be suspended. The attachment of the infringing objects provides sufficient security for this.

Damages may be claimed as part of this action. It should be noted, however, that for many years, and in line with commercial cases, when damages are claimed in trademark litigation cases, the federal courts have required actual proof of the damage and of the relative amounts involved.

As of the early 1990s, such as in the case of Afrika Kueros SA v Sacatex SRL and Kantor SAIC, inre: Cesse in the use of trademark and damages (decision rendered by Federal Chamber of Appeals in Civil and Commercial Matters No. III on 17 May 1991), the courts have adopted the position that damages may be presumed by the mere existence of an infringement and that, on the basis of article 165 of the Civil and Commercial Code, the judge has discretion to decide the amount of damages to be awarded. A percentage of the profits, the volume of sales and the reduction in sales have all been used by the courts as factors to establish the amount of damages.

The federal courts in civil and commercial matters are competent to try civil actions. The Civil and Commercial Code, which regulates ordinary actions, is applicable to these cases.

Denouncement before a criminal court

Any party that has reason to believe that a criminal offence has occurred may file a denouncement with a criminal court. In these circumstances, a federal criminal court rules and enforces a range of precautionary measures. During this stage of the proceeding, the owner of the trademark registration acts jointly with the district attorney (fiscal).

The action is steered by the district attorney and the denouncing party does not have any participation in the investigations or proceedings; however, a party who has been directly affected as a victim of the criminal offence may also file a criminal action at the federal criminal courts and act as the main accuser, jointly with the district attorney.

In a criminal denouncement, the owner of the trademark registration is not considered a party to the case. Thus, the owner does not have the right and will not be able to intervene in the investigation, or at any stage of the process thereafter (ie, file remedies and appeals to contrary statements on behalf of the accused).

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