Trademarks

1. OVERVIEW

CONCEPTS

Trademark: Any sign with distinctive capacity.

Trade name: A name or sign used to designate an activity, whether for profit or otherwise.

First to file basis is applied.

No previous use is required to file an application.

Creation of rights: Registration confers the right to the exclusive use of the mark and the right to act in case on infringement.

The owner of an unregistered mark may oppose an application, or file a nullity action against a registration, if the applicant, or registrant, knew or should have known that the mark belonged to a third party.

Although Argentina is not a member of the Nice Agreement, the International classification system of goods and services is adopted.

A trademark can be registered in the 45 available classes to confer it a complete protection.

Multiple class applications are not available; accordingly, a separate application is required for each class.

The specification may include all goods or services in the class.

LEGISLATION

Trademark Law No. 22,362 of 26 December 1980, effective from 1 February 1981 and Implementing Regulations of 24 March 1981.

Paris Convention.

GATT-TRIPS

REGISTRABILITY

Any person (individual or company) with a legitimate interest is entitled to file. Applicants not domiciled in Argentine must appoint a representative.

Any trademark with distinctive capacity which does not conflict with earlier registrations or pending applications and which is not otherwise prohibited from registration shall be considered for registration. Particularly, marks capable of graphic representation, words, devices (logos), labels, seals, holograms, shades of colors (combined with other elements), signatures, three-dimensional objects, packaging, and slogans are registrable.

Audible, olfactory and tactile trademarks can be registered as long as some particular requirements are complied with at the moment of filing the application.

Disclaiming of certain parts of the trademark may be requested to a particular application.

The following may not be registered:

  • Names, words or signs constituting the necessary or usual designation of the product or service, or descriptive of its nature, function, qualities, or other characteristics.
  • Names, words or advertising slogans which have passed into general use, or advertising slogans which lack originality.
  • The shape of the products, their natural or intrinsic color, or a single color applied to a product.
  • Names of activities, including names and company names which describe an activity; however, initials, words, and other signs with distinctive capacity which form part of such names may be registered to distinguish products or services.
  • Foreign or domestic denominations of origin.
  • Trademarks which may lead to error in respect of the nature, properties, merit, quality, manufacturing method, purpose, origin, price or other characteristics of the marked products or services.
  • Immoral or contrary to public order trademarks.
  • Trademarks identical or confusingly similar to registered marks (or previously filed marks) in respect of the same products or services.
  • Names, pseudonyms or portraits of a third party may not be registered unless with his consent or that of his heirs up to the fourth degree.

Geographical words are registrable as trademarks, unless they are denominations of origin for the products or services.

Names of persons are registrable, provided that there is consent of the person or of his heirs, inclusive up to the fourth degree.

Collective marks are registrable. Since there are no specific provisions, the collective proprietors of the collective mark must act jointly to renew, assign, or license the trademark; each one of the collective owners is entitled to use the marks, and institute opposition or infringement proceedings, unless a specific agreement between them provides otherwise.

PROHIBITED MARKS

Names, flags and symbols of international organizations.

The names, abbreviations and emblems of the Red Cross, the United Nations, the abbreviation “UNESCO”, and Olympic Rings Symbols.

Flags of countries and local administrative regions, marks used by the state, provinces, municipalities, religious and health organizations, representations to the Head of State, national arms, and official seals.

WELL KNOWN TRADEMARKS

If the applicant knew or should have known, at the time of filing the application, that the mark belonged to a third party, registration becomes vulnerable to a declaration of nullity.

In Argentina there is no prevision for dilution. However, the courts have recognized to the owners of well known marks the right to oppose unauthorized applications for registration in classes not covered by the original registration.

CANCELLATIONS

Actions for cancellation (caducity actions or nullity actions) are brought before the Federal Courts of Buenos Aires.

The bases for nullity actions can be prior registration, prior application, prior use, registration obtained against the law, and registration obtained in bad faith.

A nullity action must be brought within ten (10) years of registration, unless registration was obtained in bad faith, in which case no time limit applies.

The ground of a caducity action is non use.

A caducity action may be instituted after five (5) years of non-use.

Any person (individual or company) with a legitimate interest may bring a caducity or nullity action.

The Trademark Office does not settle legal disputes between parties; all legal disputes must be settled in the Federal Courts. Please click here to see a schematic overview of the procedures relating to Legal Disputes in IP matters in our country.

The decision can be appealed to the Chamber of Appeals and, under certain circumstances, to the Supreme Court.

USE

Use is required to renew a registration and to avert cancellation thereof.

A trademark is vulnerable to cancellation if not used for over five (5) years. The use requirement begins as from the date of registration and the five year term is calculated backwards as of the date a cancellation action is brought against the registration or the expiration date.

Use of the mark by a licensee, franchisee or distributor or any third party with authorization of the trademark owner constitutes use.

No standards (such as in relation with frequency, quantity, extension, etc.) are established.

Use for any product or service in the Argentine territory or for exporting, including the use of the mark as a business name complies with the use requirement of a registered mark.

Depending on the nature of the product or service and specific circumstances of the case, a minimal use may be sufficient.

Use of the mark on goods or services for which it is not registered would also suffice to validate the existing registration.

Proof of use: Advertising material, invoices, sale figures, catalogues, samples, witness statements, etc.

As a general rule, the burden of proof lies on the claimant, but the defendant has been regarded as being in a better position to aid the court in ascertaining whether there are grounds for cancellation.

Cancellation of a registration does not operate automatically nor ex-officio

VALIDITY TERMS

The registration term is ten (10) years counted from the registration date.

If the mark is not used for a consecutive period of five (5) years, it becomes vulnerable to a cancellation action.

MAINTENANCE

No maintenance fee is required within the 10-year term.

Products manufactured in Argentina must be accompanied by the term “Industria Argentina” or “Producción Argentina”. Goods Manufactured abroad must bear an indication of the country of manufacture.

Use of “Marca Registrada” or “MR”  or the symbol â is optional.

TRADE NAMES

Protection of a trade/corporate name arises from public use of the name for more than one (1) year.

Registration per se in the Company Register does not give any rights or preclude a third party from adopting and using the registered trade/corporate name.

The right to use trade/corporate name is limited to the field of activities for which said name is used.

Trade/corporate names based on prior identical trade/corporate names are prohibited.

Conflict of rights between trademarks and trade names.

A proprietor of an existing registered trademark can challenge the registration or use of an identical or confusingly similar trade/corporate name. Similarly, the proprietor of a trade/corporate name may oppose the application or use of such name in respect of the relevant field of activities.

Protection under Art. 8 of Paris Convention is available. Trade/corporate names must be publicly known in Argentina and the enterprise need not have a branch or agency in Argentina. However, it is preferable if there is a minimal level of bona fide activity.

REGISTRATION TIME

The following are the average times for the different stages in the registration process, provided that no oppositions are filed by third parties and no Office Actions are issued by the Trademark Office:

STAGES AVERAGE TIME

(Months)

Filing date 0
Publication 3-4
Opposition period expiry 1 from Pub. Date
Examiner’s report 10-12
Certificate issuance (no oppositions – no O.A.) 12-14

2. FILING REQUIREMENTS

  1. Power of Attorney, notarized and legalized (by Apostille or by the Argentine Consulate) must be submitted within ninety (90) days from the filing date in Spanish. In urgent cases a facsimile copy simply signed by the Applicant is acceptable, but to be confirmed with a formal Power of Attorney within 90 days from the filing date. The POA must be dated prior to the filing date in Argentina.
  2. If an international priority under the Paris Convention is claimed, the following are the requirements:

a. Country, date and number of the priority application
b. Original Priority document

2) a. Country, date and number of the priority application: The country and date of the priority application must be stated at the moment of filing the application. The application number should be provided at the moment of the filing, if available, but can be stated later on.

2) b. Original Priority document. It must be filed within ninety (90) days from the filing date in Argentina, either in Spanish or together with a Spanish translation, verified by Argentine Sworn Translator. This document does not require legalization. Electronic priority documents issued by the corresponding Office are allowed.

Some PTOs can issue bilingual priority certificates. If the priority certificate is issued in the original language and Spanish, there are no other formal requirements other than filing the certified copy of the priority certificate. If the priority certificate is issued in English, we can translate the priority certificate into Spanish ourselves and have it verified by an Argentine Sworn Translator.

On the other hand, if the PTO can only issue priority certificates in a language other than English or Spanish, then there are two options:

i. With a sworn translation from the original language to English, duly signed and stamped by the sworn translator and legalized (by Appostille or by the Argentine Consulate) in order to certify that the person who translated the document is indeed a sworn translator. Once we receive the priority document and the legalized sworn translation we can translate the latter into Spanish and have it verified by an Argentine Sworn Translator. This also applies to Assignment of Priority Rights documents.
ii. We can have the priority document translated directly by an Argentine Sworn Translator. This is usually the most expensive option since Argentine Sworn Translators specializing in languages other than English charge very high rates. This also applies to Assignment of Priority Rights documents.

3. PROCEDURE

The Office performs a first examination for formalities and orders the publication in the Trademark Gazette.

Any person (individual or company) with a legitimate interest may oppose a Trademark Application.

The grounds of an opposition may be prior registration, prior application and prior use.

Oppositions must be lodged within thirty (30) days of the publication of the application in the Trademark Gazette.

The Trademark Office does not decide on opposition matters. The parties themselves must resolve the conflict (either amicably or in Court).

If an application has encountered no oppositions or once the opposition is withdrawn, the Trademark Office performs an examination to determine distinctiveness and conflict with prior applications and registrations. If a particular application is rejected, there is a right of appeal before the Federal Court of Buenos Aires, within thirty working days of the notification.

Please click here to see a Trademark Procedure flow chart.

4. OPPOSITIONS

The opposition process in Argentina is quite different from the process followed by other Trademark Offices around the world.

Oppositions are lodged before the Trademark Office which then notifies the applicant for registration. If, within a one (1) year period of notification, the applicant and the opponent fail to agree on a settlement, the application for registration is considered abandoned, unless the applicant brings an action against the opponent in order to obtain a legal decision on the merits of the opposition.

The action has to be filed before the Trademark Office which, within ten (10) days, forwards the case to the Federal Court of Buenos Aires. If the legal action is to be instituted, a mandatory mediation, prior to the expiring of the one-year period, has to take place.

The Trademark Office does not settle legal disputes between parties; all legal disputes must be settled in the Federal Courts. Please click here to see a schematic overview of the procedures relating to Legal Disputes in IP matters in our country.

The parties may, within the one (1) year term, settle for the Office to decide the case; in this case, which is not typical, there is no right of appeal.

Extensions of the opposition term are not admitted. However, any interested party may submit an Attention Call before the Trademark Office any time while the application is pending. The object of this notice is to draw the examiner’s attention on the reasons why the application should not be allowed. The examiner may disregard the arguments or, on the contrary, raise an official action to the applicant.

If an application has encountered no oppositions or once the opposition is withdrawn, the Trademark Office performs an examination to determine distinctiveness and conflict with prior applications and registrations. If a particular application is rejected, there is a right of appeal before the Federal Court of Buenos Aires, within thirty working days of the notification.

Please click here to see a schematic view of the opposition process in Argentina.

5. RENEWALS

The registration term is ten (10) years counted from the registration date.

If the mark is not used for a consecutive period of five (5) years, it becomes vulnerable to a cancellation action.

A registered trademark can be renewed for unlimited consecutive ten-year terms. Renewals can be filed within sixty (60) days from the expiration date.

Renewal is a condition for the continuation of rights conferred by the original registration.

The required documentation for renewals is the following:

  • Power of Attorney, notarized and legalized (by Apostille or by the Argentine Consulate). In urgent cases a facsimile copy simply signed by the applicant is acceptable, but to be confirmed with a formal Power of Attorney.
  • A sworn declaration that the mark has been used within the preceding five (5) years..

Late renewals are not possible.

Restoration is not possible.

6. ASSIGNMENTS & CHANGES OF NAME

ASSIGNMENTS

The assignment of the trademark shall become enforceable against third parties, only once it has been recorded before the ARPTO.

The following are the required documents for recording an assignment:

a. Assignment document: Must be signed by both parties. If a party is a foreign person, the signature must be notarized and legalized by Apostille or by the Argentine Consulate. The notary must attest that the representation and faculties invoked for carrying out the act have been proven in due form. In order to download a Trademark Application Assignment Form, please click here.
b. Original certificate of registration in Argentina if the trademark has been granted. It should be noted that the filing of this document is optional and does not obstruct the procedure of recording the assignment. However, the certificate showing the new owner will be required at the time of enforcing the right.
c. Power of Attorney signed by the party, notarized and legalized (by Apostille or by the Argentine Consulate), unless included in the assignment document is also required.

All the documents must be original (copies are not allowed), must be in Spanish or filed together with a sworn translation into Spanish performed by an Argentine Sworn Translator and legalized by the Sworn Translators Association of the City of Buenos Aires (CTPCBA).

The following are the rules regarding consideration:

a. Consideration need not be stated.
b. A nominal consideration may be stated.
c. The amount of U$S 1.00 is accepted.

Assignments may be made with or without goodwill and it is not necessary to refer to goodwill in the deed.

Pending applications may be assigned. The assignment will be recorded prior to its registration.

The procedure starts with the filing of the assignment form together with all the above-mentioned documentation. Once this form is filed, the ARPTO will examine the documentation in order to verify its validity.

The PTO will conduct a study verifying that the documents submitted meet the formal requirements.

Once the assignment has been approved by the PTO, the Office will issue a notification certifying that, in light of the filed documents, the assignment has been recorded in favor of the assignee. This document issued by the ARPTO is the proof of the assignment.

CHANGES OF NAME

The following are the required documents to record a Change of Name:

a. Change of name document (Certificate of Registry), signed by a notary attesting the change of name, and legalized by Apostille or by the Argentine Consulate. Please click here to download a Change of Name Form. Otherwise, a legalized certification of change of name of the company, issued by the competent authority in the corresponding country, must be filed.
b. Power of Attorney signed by the applicant (or owner), notarized and legalized (by Apostille or by the Argentine Consulate).

All the documents must be original (copies are not allowed), must be in Spanish or filed together with a sworn translation into Spanish performed by an Argentine Sworn Translator and legalized by the Sworn Translators Association of the City of Buenos Aires (CTPCBA).

The procedure starts with the filing of the change of name form together with all the above-mentioned documentation. Once this form is filed, the ARPTO will examine the documentation in order to verify its validity.

The PTO will conduct a study verifying that the documents submitted meet the formal requirements.

Once the change of name has been approved by the PTO, the Office will issue an ownership update stating that a change of name has been filed and also certifying that, in light of the filed documents, the change of name was recorded in favor of the assignee. This document issued by the ARPTO is the proof of the change of name.

The registrant may effect all post-recordation actions under the new name.

MERGERS

Recordation before the ARPTO is required.

The following are the necessary documents to record a Merger:

a. A certificate attesting the merger issued by the Registry of Companies or by Notary Public or by any other competent authority according to the laws of the country where the merger took place. Legalization by Apostille or Argentine Consul is required. Otherwise, it is also acceptable to submit an assignment document signed by both legal representatives (it can be the same person). If a legal representative is a foreign person, the signature must be notarized and legalized by Apostille or by the Argentine Consulate. The notary must attest that the representation and faculties invoked for carrying out the act have been proven in due form. In order to download a Trademark Application Assignment Form, please click here.
b. Original certificate of registration in Argentina if the trademark is granted. It should be noted that the filing of this document is optional and does not obstruct the procedure of recording the assignment. However, the certificate showing the new owner will be required at the time of enforcing the right.
c. Power of Attorney signed by the applicant (or owner), notarized and legalized (by Apostille or by the Argentine Consulate).

All the documents must be original (copies are not allowed), must be in Spanish or filed together with a sworn translation into Spanish performed by an Argentine Sworn Translator and legalized by the Sworn Translators Association of the City of Buenos Aires (CTPCBA).

The transfer to the surviving entity of rights arising from registration becomes effective against third parties.

SECURITY INTEREST

Recordation at the Trademark Office is required.

Recordation of securities in general is required with the “Registro de Créditos Prendarios”.

The registered trademark must be sold in public auction.

7. LICENSING

The concept is recognized in Argentina.

There are no quality control requirements.

Recordation is advisable. Following recordation, the licensee is entitled to deduct amounts paid to the licensor as expenses and the licensor becomes subject to a lower withholding tax. Recordation also serves as a notice to third parties.

There are no provisions for licensing of unregistered trademarks; however, any rights arising from future registration would be jeopardized.

8. ENFORCEMENT OF RIGHTS

The following acts constitute infringement:

  • Counterfeiting or fraudulently imitating a registered trademark or trade name.
  • Using a counterfeited registered trademark or trade name, or one fraudulently imitated or belonging to a third party without authorization.
  • Selling or offering for sale a mark as described in above paragraph.
  • Offering for sale, selling, or otherwise marketing products or services under a counterfeited or fraudulently imitated trademark.

It is possible to obtain a pre-trial injunction to restrain the infringement. Precautionary measures can consist of a seizure, and/or a deposit in Court of a sample, and/or an inventory, and can be summarized as follows:

  • The injunction is requested, presenting the evidences.
  • Considering it relevant, the Judge can request a previous caution as guarantee to the prosecution.
  • Once authorized by the Judge, the precautionary step is carried out in the sites where the merchandise in infraction is.
  • To be kept the previous measure in force, the action has to be started within 15 days from the completion of the measure. The legal action can consists first of cessation of improper use and then of damages and losses.
  • If the counterfeits are manufactured abroad, the action can be filed against the importing company.
  • Provided that all the documentation (and the caution if it was required) is disposable, the preventive measure can be obtained and carried out in 15-20 days, as an average. It is important to mention that this term can vary in function of the quantity and location of the seizure sites. If all these places are located in Buenos Aires city, the proceeding is quicker than in the interior provinces.

The necessary documentation to request preventive measures as well as the subsequent legal action in relation with trademarks matters is:

a. General Power of Attorney, notarized and legalized (by Apostille or by the Argentine Consulate).
b. Trademark certificates that evidence that the plaintiff is the proprietor of the Trademark.

The civil action for infringement must be brought before the competent Federal Court. The procedure is conducted under the general rules for civil litigation. There is a right of appeal before the Court of Appeals.

The registrant may also request that any infringing products are seized when in Customs and then filing an action for infringement before the Federal Court. In this case only an injunction against infringement may be obtained.

9. FAQ

Is there a customs alert system in Argentina?

The Federal Administration of Public Revenue (AFIP) issued, in 2007, Resolution No. 2216 which established the Customs Alert System with the objective of enabling effective actions against infringements of IP rights. The procedure of this System is as follows: firstly, right holders can register their trademarks with Customs. Subsequently, all imports of goods bearing a thus registered trademark are automatically blocked for three days, during which the right owners can inspect them to determine whether the goods are genuine before being released by Customs. Additionally, right holders can exclude certain importers from the automatic blocking system by providing the necessary information to the Customs Office.

Apart from its main purpose, this Alert System provides valuable information to right holders regarding the parallel importation of genuine goods. Although parallel importation of genuine goods is not considered a trademark infringement in Argentina, it may constitute, for instance, a contractual breach in the country of origin of the goods. This can in turn provide the grounds for preventing their importation into the country.

The Alert System has shown to be a very effective tool in the fight against infringements of IP rights in Argentina: once counterfeited goods are detected, the importers simply abandon them to be destroyed whereas genuine goods, once they have been checked, are released within 48 hours without interfering with the flow of international commerce, while providing valuable information to right owners.

The information contained in this website is not intended to constitute legal advice or other professional services. Instead, this information is merely intended to be of a general nature and is provided solely for the interest of the reader. Accordingly, we cannot accept any responsibility whatsoever for its use. Take into account that this information should not be used as a substitute for a full and proper consultation. We have attempted to ensure that all information contained on this site has been obtained from reliable sources. However, the accuracy, integrity and entireness of any information provided on this site cannot be guaranteed, and we cannot be responsible for any errors or omissions or any consequences arising from its use.