Argentina: Trademarks In Argentina In A Nutshell

Last Updated: 13 February 2017
Article by Mario Eduardo Castro Sammartino
Most Read Contributor in Argentina, November 2017

1) Trademarks in Argentina: legal framework

Trademarks in Argentina are governed by Law Number 22,362, as amended (the Trademark Law or TML). The TML supplements the Civil and Commercial Code of the Nation. Argentina is a party to the Paris Convention and has in force the Trade-Related Aspects of Intellectual Property Rights (TRIPS) provisions of the General Agreement on Trade and Tariffs (GATT).

2) Conditions for registration

Under Article 1 of the TML, any sign with distinctive capacity may be registered as trademark, being it words with or without conceptual content, drawings, emblems, monograms, engravings, patterns, seals, images, bands, combinations of colours applied to goods or packaging, wrapping, packaging, combinations of letters and numbers, letters and numbers drawn in a particular way, advertising slogans, distinctive embossments and any other with such capacity.

However, such signs must not be identical or similar to others previously registered or applied for in order to distinguish the same goods or services (TML, Article Number 3, Sub-Articles (a) and (b)) and must not fall within a number of prohibitions set forth by Articles Number 2 and 3 of the TML1.

No prior business use is required to apply for trademark protection. Argentina has enacted an attributive-system: trademark protection stems from its registration with the National Institute of Industrial Property (Instituto Nacional de la Propiedad Industrial or INPI). However, de facto and famous trademarks have been granted protection under Argentine law. According to Article 24, Sub-Article (b) of the TML, trademarks registered by anyone who, at the time of applying for registration, knew or should have known that the marks belonged to a third party will be void.

The new Civil and Commercial Code of the Nation, in its Article Number 151 requires that legal entities´ names must have distinctive capacity in relation to trademarks.

3) Term of protection

Trademark protection lasts for ten years as from registration. Trademarks in Argentina may be renewed indefinitely for additional 10-year periods, provided it has been used within the five years before the expiration date.

4) Registration procedure

Trademark applications must be filed with the INPI. Argentina has in place a single-class application system: a separate trademark application must be filed on each class of products or services. As of January 1, 2017, Argentina has put in force the 11th Edition of the Nice Agreement Concerning the International Classification of Goods and Services for the Registration of Trademarks (INPI´s Resolution P No. 108/16).

Oppositions and objections may be raised not only by the owner or applicant of already registered or applied for identical or similar trademarks but also by the INPI itself.

Third parties´ oppositions are not resolved by the INPI. The TML, in its Article Number 16, establishes a 1-year period for the parties to negotiate among themselves the lifting of the opposition. Should the parties fail to reach an agreement, the applicant must bring legal actions against the opposing party, within the same 1-year period, to avoid the application be deemed abandoned. This 1-year period is not suspended by the initiation of mandatory pre-trial mediation (Law Number 27,222).

A voluntary trademark registration may also be filed before the National Direction of Customs (Dirección Nacional de Aduana or DNA) under an alert system aimed to control foreign commerce and fight against trademark counterfeiting (Federal Administration of Public Revenues, General Resolution Number 2,216/07).

5) Maintenance

Renewal of a trademark registration requires the use of the sign, within the five-year period prior to the expiry date, for the sale of a product, the rendering of a service, or as a trade name (TML, Article 5). Additionally and in said case of lack of use, any interested party with a legitimate interest is entitled to file a claim to cancel the trademark on such grounds (TML, Article 26). Further to this issue, under Article 24, Sub-Article b), of the TML, trademark registrations are invalid when registered for their commercialization, by those regularly engaged in the registration of trademarks for that purpose.

6) Assignment

Trademarks in Argentina may be freely assigned, and such assignment agreements are only subject to the principle of party autonomy. Assignments must be registered before the INPI to be effective vis-à-vis third parties (TML, Article 6).

7) Licensing

Licensing of trademarks in Argentina is also only subject to the principle of party autonomy. Registration of international trademark licensing agreements before the INPI brings about different benefits, such as tax deductions - the local licensee will be able to deduct license fees as expense for income tax purposes - and lower tax rates - the foreign licensor will enjoy an effective lower withholding income tax rate – (tax effects deriving from the Transfer of Technology Law and Income Tax Law) and effectiveness of the agreements against third parties (INPI´s Resolution Number 117/2014).

Footnote

1. The TML expressly prohibits the registration of certain signs, such as those constituting the necessary or usual designation of the good or service to be distinguished or describing its nature, function, qualities or other characteristics; advertising slogans having passed into general use before the application to register them; shapes of goods; the natural or intrinsic colour of a good or a single colour applied to the good; national or foreign appellations of origin; those misleading as to the nature, properties, merit, quality, processing techniques, function, origin, value or other characteristics of the goods or services to be distinguished; words, drawings and other signs that are contrary to morality and decency; letters, words, names, badges or symbols that are used or reserved for use by the nation, provinces, municipalities or religious or health organizations; letters, words, names or badges used by foreign countries and international organizations recognized by Argentina; the name, pseudonym or likeness of a person, without his / her consent or that of certain heirs; the designations of activities, including names and company names that describe an activity in order to distinguish goods; and advertising slogans that lack originality.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Mario Eduardo Castro Sammartino
 
Some comments from our readers…
“The articles are extremely timely and highly applicable”
“I often find critical information not available elsewhere”
“As in-house counsel, Mondaq’s service is of great value”

Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement

    Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of www.mondaq.com

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

    Disclaimer

    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

    Registration

    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

    Cookies

    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

    Links

    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

    Mail-A-Friend

    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

    Emails

    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

    Security

    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at enquiries@mondaq.com.

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions