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 effective from February 1st, 1981 and amended by Law No. 27.444 of June 18th, 2018. Disclaimer: this information is currently being revised as there have been substantial amendments to the Law.

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) can be brought before the Federal Courts of Buenos Aires or before the Trademark Office, depending on the cause originating the action.

The basis for a caducity action is lack of use. A caducity action may be instituted after five (5) years of non-use prior to initiating the action.

A trademark will not be subject to cancellation if it is used in relation to the goods/services protected by the registration or if it is used in relation to connected goods/services. Additionally, a trademark will not be subject to cancellation when said mark is part of the name of the activity related to the aforementioned goods/services.

Partial caducity of trademarks can be instituted in relation to the goods/services protected by the mark that had not been used for five (5) years prior to initiating the action, unless there were causes of force majeure.

The basis for a nullity action is that the registration was obtained in infringement of what is stipulated by the Trademark Law in which case the matter will be resolved in an administrative instance by the National Trademark Office. On the other hand, a nullity action can be brought before the Federal Courts against a registered trademark when its owner knew, or should have known, that the trademark belonged to a third party or when the trademarks were registered with the purpose of selling them by a person whose habitual activity is to file trademarks.

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.

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

The Trademark Office resolves on some specific legal disputes between parties; in other matters, 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.

In both cases, 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.

Prior to the amendments introduced by Law 27.444, the use made with respect to one good/service preserved the validity of the registration explicitly covering that good/service, but also registrations of that trademark in any other class. As from these amendments, the use of a particular good/service is only sufficient to keep the right on that good/service and on related goods/services irrespectively of the class they belong to.

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.

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. The submission of a sworn declaration of use of the trademark will be required between the fifth and sixth year of its registration.

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 while the application is pending, 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. 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 National Trademark Office will decide on the merit of the oppositions when the parties do not reach an agreement after three (3) months have passed from the notification of the opposition to the applicant.

Substantive Examination: the Trademark Office performs an examination to determine distinctiveness and conflict with prior applications and/or 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.

As for the ARPTO’s objection process, when the Trademark Office raises an objection, it is notified through the Trademark Gazette with a specific code to indicate the type of objection but not its content. From the notification date, there is a sixty (60) days period for the T.O. to issue a hard copy of the office action containing all the relevant details of the action.

The deadline to obtain the withdrawal of an opposition and/or to reply to a precedent office action begins sixty (60) days after the notification date of O.A.

If no oppositions are lodged by third-parties and no objections are raised by the T.O., or once all objections and oppositions have been overcome, the T.O. will grant the trademark registration.

As from January 2014, the Trademark Office issues the certificates in electronic format only, in accordance with resolution P-341/13 of the ARPTO and Digital Signature Act Nº 25.506.

Please click here to see a Trademark Procedure flow chart.

4. OPPOSITIONS

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.

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.

The opposition process in Argentina is different from other countries where the opponent and the applicant submit their grounds before the Trademark Office and the latter issues its decision in favor of one of the parties. In Argentina, the T.O., before deciding on the merit of an opposition, gives the parties the possibility to resolve the dispute amicably by themselves; and once this period has expired, the Trademark Office will decide on the merit of the opposition.

Once an opposition is filed against a trademark application, the Trademark Office notifies it to the applicant and grants a three-(3)-month term from the notification date to file the administrative withdrawal of said opposition; If the opposition withdrawal is not submitted, the T.O. will declare if the opposition is founded or unfounded (after the parties have submitted their grounds before the Office).

The administrative withdrawal of an opposition is generally obtained by means of an amicable agreement reached with the opponent, as a result of preliminary negotiations carried out between the parties. These agreements may be of diverse nature, although, in most cases, they are reached through a limitation in the scope of the protection, the exclusion of any product or service, an undertaking of use of the trademark in a certain manner, among others.

Accordingly, the applicant has a three-month period (counted from the notification date) to reach an agreement with the opponent. That is, the applicant must submit before the Trademark Office evidence that an agreement has been reached with the opponent before the three-(3)-month term has elapsed. Otherwise, upon expiration of such term, and as long as the oppositions have not been withdrawn, the Argentine Trademark Office (ARPTO) shall notify the opponent that they have a non-extendable 15-working-days term in order to indicate if they wish to ratify the opposition, If the opposition is ratified, paying a second official fee, the opposition resolution process carried out by the T.O. will commence.

If the opponent does not ratify the opposition, the opposition resolution process will not start and the opposition will become an informal objection (“attention call”) which can be taken into account (or disregarded) by the T.O. without further intervention from the opponent. In other words, the object of an attention call is to draw the examiner’s attention on the reasons why the application should not be allowed and can be taken into consideration or not by the examiner at the moment of performing the substantive examination.

Below you will find a detailed description of the opposition resolution process in conformity with Resolution No. Nº P-183/2018.

OPPOSITION RESOLUTION PROCEDURE

  1. Once the three-(3)-month term for the applicant to obtain the withdrawal of the opposition(s) is over, the National Trademark Administration will request the OPPONENTS who at that moment had not yet withdrawn their opposition to indicate, within a non-extensible period of fifteen (15) working days, whether they ratify the opposition filed against the registration of the trademark and to carry out the payment of the fee corresponding to the administrative instance of the opposition resolution process and, within that same term, to expand on the grounds of their right, also providing evidence as they deem relevant. Should the fee not be paid within that term, it will imply a lack of interest by the opponent to keep the opposition in force and, therefore, automatically and without further consideration, the opposition administrative instance will not be initiated and will be considered by the National Trademark Administration as a mere attention call.
  1. Within fifteen (15) working days after the term indicated in item 1 has passed, and regardless of the opponents having expanded on the grounds of their opposition, the National Trademark Administration will notify the APPLICANT about all oppositions still in force and the eventual broadening of their arguments and will be granted a non-extensible period of fifteen (15) working days so that the applicant can reply to each one of them, providing evidence as deemed relevant in that same act.
  1. Proofs offered by both parties will be provided together after the term indicated in item 2 has elapsed.

Documentary or instrumental evidence will have to be provided in the same act of expanding on the grounds or the reply to the opposition. The remainder means of evidence will be evaluated by the National Trademark Administration in terms of their admissibility, as well as regarding the term and form to produce them. Those manifestly inadmissible or superfluous or solely dilatory for the resolution of the instance will not be admitted. The decisions made regarding the admissibility or inadmissibility of proofs will be unappealable without prejudice to invoking them in the judicial instance, should that be the case.

The term to produce proofs may not exceed forty (40) working days. Said term is common to both parties and will be counted from the notification of the decision issued by the National Trademark Administration in that regard.

Evidence not provided by the parties before the term established by the National Trademark Administration to do so has elapsed will not be considered.

The National Trademark Administration will be able to procure electronic or IT-related verifications based on public records, including their own, or other electronic cross-checking offered by the parties, deemed as relevant.

  1. In case that any of the parties instituted caducity or nullity legal actions against any of the trademarks involved in the dispute, the parties will have to follow the appropriate judicial course until the NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY regulates the procedure for solving trademark caducity cases set forth in article 26 of law No. 22.362 and the trademark nullity cases set forth in clause “a” of article 24 of that same law, without prejudice of which the National Trademark Administration will nonetheless decide on the distinctiveness of the opposing marks and/or on the other grounds of the oppositions about which a ruling can be issued and will reserve the file in order to decide on the acceptation for granting of the trademark once the caducity or nullity action has been resolved by the Court.
  1. Once the evidence has been provided, or once the term to do so has elapsed, and before the decision of the National Trademark Administration on the merits of the opposition, in the case that no other prior procedural issue exists, the parties will be notified and given a common ten-(10)-working-day period so that they can voluntarily submit their final arguments (plea).

Within said term, the parties will have the possibility of submitting a jointly written report informing that they have initiated a mediation/conciliation procedure or any other alternative method for resolving conflicts. In such case, a one-time-only, non-extensible thirty (30) working days stay of the above term will be granted for both parties, counted from the date in which this was informed.

Within this last term, the parties will have to conclude the mediation, conciliation, or the alternative method for resolving conflicts that they had informed as having initiated.

Once this term has elapsed, a new ten (10) working days common term will automatically begin with the same effect and scope as the one previously interrupted.

In the case that the parties reach a resolution of the dispute by means of the chosen alternative method, they must inform to the National Trademark Administration before the terms have elapsed, filing the appropriate documentary proof. In such scenario, the decision making about said solution will be rendered moot, but the terms of said solution will not bind the Administration about the resolution regarding the acceptance for granting of the trademark.

  1. Once the thirty (30) working days term has elapsed, and if the dispute had not been previously rendered moot, the National Trademark Administration will decide on the merit of the oppositions determining whether they are grounded or not.
  1. Against the final resolution issued by the National Trademark Administration in the administrative instance of the opposition resolution process, the decision may be appealed only by bringing a direct action before the Federal Courts of Appeals in Civil and Commercial Matters of Buenos Aires, so that said judicial instance may resolve the dispute between applicant and opponent, having paid the relevant fee.
  1. Once the Court’s decision about the worthiness or lack of merit of the opposition is final or consensual, the National Trademark Administration, if it were in conditions to do so, will then decide, by means of a separate administrative act, on the acceptance or rejection of the trademark application.

Some important aspects to consider about the opposition resolution process in Argentina:

  • The new procedure contemplates the possibility for the opponent to expand on the grounds of the opposition, the right of the applicant to reply to it, and the right of both of them to offer proof, in conjunction with the principles of celerity, simplicity, and procedural economy.
  • The burden of an opposition has been substantially shifted from applicant to opponent because the opponent must ratify the opposition and, more importantly, pay a substantial fee to do so. Failure to pay the ratification fee shall result in the termination of the opposition procedure. It is important to note that this burden is not imposed on the applicant, given that no similar fee is applied for the applicant who defends the application.
  • Before the final resolution by the National Trademark Administration, the new regulation allows for the possibility for the parties to use alternative systems for resolving conflicts (mediation), under the intermediation of a suitable and impartial professional.

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 granting date.

Renewals must be filed within sixty (60) days from the expiration date.

Late renewals are not possible. Restoration of lapsed trademarks is not possible.

If the mark is not used for a consecutive period of five (5) years, it becomes vulnerable to a cancellation action by a third party with a legitimate interest. The National Institute of Industrial Property may declare ex officio the lapsing of a trademark that has not been used in the country during the last five (5) years, unless there are causes of force majeure. The caducity may be total or partial for those products or services for which the trademark has not been used, except for those products or services that have not been used but that are related to those registered and in use or to an activity designated with that trademark. Said decision may be appealed to the National Chamber of Appeals within thirty (30) business days of its notification.

A registered trademark can be renewed for unlimited consecutive ten-year terms.

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

Trademarks are renewed exactly as originally granted; modifications are not possible.

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.

A sworn declaration of use of the trademark must be filed between the fifth and sixth year of its registration.

RECLASSIFICATIONS

The Nice Classification (NCL) is modified several times from the time a trademark is granted until its renewal date. 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 reclassified 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.

 

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.

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