Miranda y Asociados

TRADEMARKS IN ARGENTINA

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, International classification system of goods and services is adopted.
A trademark can be register in the 45 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 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 sounds and musical notes are not registrable.
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 of 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 denomination 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 proceeding, 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 would be prohibited from registration.
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.

DOCUMENTS REQUIRED FOR FILING THE APPLICATION:

Power of Attorney, notarized and legalized by Appostille or by the Argentine Consulate.
If an international priority under the Paris Convention is claimed, the following are the requirements:
- Country and application number and date of the priority. This information must be stated when filing in Argentina.
- Priority documents. They must be filed within ninety (90) days from the filing date in Argentina, together with a sworn translation into Spanish.

REGISTRATION PROCESS:

The Office performs a first examination for formalities and orders the publication in the Trademark Gazette.
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 going to be instituted, a mandatory mediation, prior to the expiring of the one year period, has to take place. 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.
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.
Opposition 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.
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 notification.
Registration Process Flow Chart
Opposition Schedule Flow Chart

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

VALIDITY TERMS AND 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.
Renewal is a condition for the continuation of rights conferred by the original registration.
Documentation for renewals is the following:
- Power of Attorney, notarized and legalized by Appostille or Argentine Consul.
- A sworn declaration that the mark has been used within the preceding five (5) years.
- Nine prints in the case of design marks.
Late renewal is not possible.
Restoration is not possible.

MAINTENANCE:

No maintenance fees is requested 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.

ASSIGNMENTS:

The following are the required documents:
- Assignment document. Both parties must sign;
- If a party is a foreign person, the signature must be notarized and certified by Appostille or Argentine Consul. The notary must attest that the representation and faculties invoked for carrying out the act have been proven in due form.
- A Power of Attorney signed by the party, unless included in the assignment document is also required.
- Original certificate of registration in Argentina.
Documents must be in Spanish or filed together with a sworn translation.
Recordation of the assignment before the Trademark Office is required. Following recordation, the assignment becomes effective against third parties.
The following are the rules regarding consideration:
- Consideration need not be stated.
- A nominal consideration may be stated.
- The amount of U$S 1.00 is accepted.
Assignment may be made with or without goodwill and it is not necessary to refer to goodwill in the deed.
Pending application may be assigned. The assignment will be recorded prior to its registration.
Assignments of unregistered marks would be effective only between the parties. Lack of recordation does not affect the enforceability of the agreement between the parties.

MERGERS:

The following are the necessary documentation:
- 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 Appostille or Argentine Consul is required.
- The original certificate of registration.
- A Power of Attorney signed by the party, unless included in the assignment document is also required.
Documents must be in Spanish or filed together with a sworn translation.
Recordation before the Trademark Office is required.
The transfer to the surviving entity of rights arising from registration becomes effective against third parties.

CHANGE OF NAME:

The following are the necessary documentation:
- A certificate attesting the change of name 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 change of name took place; Legalization by Appostille or Argentine Consul is required.
- The original certificate of registration.
- A Power of Attorney signed by the party, unless included in the assignment document is also required
Documents must be in Spanish or filed together with a sworn translation.
The registrant may effect all post recordation actions under the new name.

SECURITY INTEREST:

Recordation is required within Trademark Office.
Recordation of securities in general is required with the Registro de Créditos Prendarios.
The registered trademark must be sold in public auction.

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.

ENFORCEMENTS 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 consists of an 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:
- General Power of Attorney, notarized and legalized by Appostille or Argentine Consul
- 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 defendant can interpose a motion for the plaintiff to place a bond sufficient to cover the costs inherent in the complaint required of the plaintiff who has no property and is a non-resident in the country.
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.
Legal Actions Flow Chart

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 the 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:

STAGES	AVERAGE TIME (Months)
Filing date	0
Publication	2
Opposition period expiry	3
Examiner’s report	16
Certificate issuance	20

Notes: If no oppositions are filed and no Office actions are issued, the total to issuance is 20 months, as an average.

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