Industrial Models and Three-dimensional Marks do not protect the functionality of a product

On March 26, 2018, Chamber No. I of the Federal Court of Appeals in Civil and Commercial matters ratified the first instance ruling that had been issued in the file “GENERAL SWEET S.A. against VICTORIA CREAM S.A. about cease of use of trademark” (docket No. 11864/2005) dismissing the plaintiff’s claim in its entirety.

GENERAL SWEET S.A., owner of the trademark “PERSICCO”, had filed a lawsuit against VICTORIA CREAM S.A. (the latter represented by our Firm), for cease of use of an ice-cream container based on a three-dimensional trademark Reg. No. 2.009.841 and an Industrial Model Reg. No. 71.315 consisting in a kidney-shaped container that included, in its interior, a dividing wall and a cavity that the plaintiff alleged to have conceived with the function of accommodating ice-cream samples. Furthermore, the plaintiff demanded that the defendant ceased its unfair practice of using a third party’s image and its attempt to imitate the plaintiff’s commercial style or Trade Dress.

In the first instance, the judge dismissed the claim considering that the containers were included in the category of three-dimensional trademarks which are weak marks. The judge held that the plaintiff’s figurative mark (a container) did not constitute a distinctive mark since what was relevant was the denomination “Persicco” by means of which the products manufactured by the plaintiff were identified, being that these elements were used jointly and further pointing out the selective criteria of the consumer public at the moment of purchasing this type of food (ice-creams). Based on these arguments, after evaluating the containers in their totality applying the traditional comparison criteria and weighting the expert technical opinions, the judge determined that there were no reasonable possibilities of confusion. Additionally, she rejected the unfair practice claim given that, from the study of the different expert evidences included in the procedure, significant differences were apparent.

Having GENERAL SWEET S.A. appealed the first instance decision, the Chamber of Appeals ratified the ruling considering that, even though the containers had a functional similarity, they were unmistakable in their extrinsic aspects and morphological structure. Furthermore, the Chamber pointed out that the small cavity conceived to accommodate ice-cream samples, besides not being novel, was not protected by the plaintiff’s Industrial Model since, in order to obtain it, the plaintiff should have filed a Utility Model application for securing the protection of the functionality of the product, indicating that, from the conclusions of the expert graphic designer‑unchallenged by the plaintiff‑, significant differences between the containers were apparent, which corresponded to the graphical identity of the respective trademarks. This ruling further pointed out that it had not been demonstrated that the plaintiff’s container was a well-known mark nor that it had a distinctive character that represented by itself the PERSICCO trademark, emphasizing that it was the plaintiff’s responsibility to prove said assumptions since they have been invoked as grounds for the lawsuit. Moreover, the Second Instance Court rejected the claim that the defendant had adopted a parasitic behavior of unfair practice given that based on the expert opinions in the fields of architecture, arts and marketing techniques, graphical design and testimonial evidence it was concluded that there was no indication at all that could lead to affirm that VICTORIA CREAM S.A. had taken distinctive elements from the plaintiff to apply them in a similar and slightly disguised manner in their corporate image.

New IP Regulations in Argentina

With the aim of promoting the de-bureaucratization and simplification of procedures, on January 11, 2018, Decree No. 27/2018 was published in the Official Gazette, through which amendments were made to the regulations concerning trademarks, patents/utility models, and designs.

While said decree is in force as of January 12, 2018, some of the articles are yet to be regulated.

Below you will find a link to the main changes that have been introduced by this decree.

Please do not hesitate to contact us should you have any query about this or any other matter.

Argentina Patent Office to change the order in which patent applications are examined

By means of Disposition No. 88/17, the National Patent Administration (ANP) has resolved that, as from the 1st of January of 2018, patent and utility model applications which Substantive Examination has not yet begun, will be examined chronologically based on their filing date.

The ANP has based this disposition on that the current methodology—in which patent and utility model applications are examined in the order in which their substantive examination was requested—goes against the transparency and celerity of the examination process.

Argentina PTO to increase Official Fees

Official fees for Trademarks, Patents and Designs are to be increased in two stages–in August and October 2017. The increase will be approximately 40% (on average) on most items, with higher increases (about 100%) for recording assignments and changes of name. On the other hand, the increase regarding annuities is expected to be lower (about 20%).

Furthermore, a new fee will be introduced corresponding to the voluntary accelerated examination of patent applications.

The new official fees have not been confirmed since the PTO is yet to release an official announcement regarding these increases.

Transfer and Intellectual Property Course – Patent Drafting

On May 18, Ayelén Barreto participated as an exhibitor in the Transfer and Intellectual Property Course organized by the Secretariat of Science and Technology at the University of Buenos Aires. Her class was based on the following topic: anatomy and drafting of a patent application.

Transfer and Intellectual Property Course – Fundamentals of the Patent System

Miguel Miranda participated as an exhibitor in the Transfer and Intellectual Property Course organized by the Secretariat of Science and Technology at the University of Buenos Aires.

The objective of the course is to ensure that the scientific and management community in all units of the University is able to manage the activities of transfer of knowledge, intellectual property and results from University to society.

In his class on April 27, 2017, Engineer Miranda explained very clearly and dynamically the fundamentals of the patent system, conducting an intrinsic analysis of patentability and the patenting process, and provided the attendants with strategies for the protection of inventions. In addition, he presented national and international statistical data on the subject matter, with particular emphasis on university patents.

Argentina T.O. adopts 11th Edition of the Nice Classification

As from January 1st, 2017, by means of INPI’s Resolution P No. 108/16, the Argentinean Trademark Office has adopted the 11th Edition of the Nice Classification for the international classification of goods and services applied for the registration of marks.

It is worth pointing out that, each time a new edition of this classification comes into force, certain goods and services are reclassified.

It is vitally important to take into consideration these reclassifications particularly at the moment of filing trademark renewal applications. This is due to the fact that, in the case that the scope of the original trademark registration comprised goods or services which had been reclassified, an additional application –a reclassification application– must be filed simultaneously with the filing of the renewal application in order to maintain the right over said goods or services. Otherwise, the scope of the renewed trademark will only include those goods or services which remain in the class; in other words, goods or services that had been moved to another class will be excluded from the trademark registration.

On the other hand, when a trademark is renewed, the goods/services which were incorporated to the class of the registration will be excluded ex officio by the Trademark Office at the moment of granting the renewal given that said goods/services were not included in the original application.

Please do not hesitate to contact us should you require more detailed information about this matter.

Below you will find a link to the complete list of reclassified goods and products of the 11th Edition of the Nice Classification.