1 Legal framework
1.1 What is the statutory or other source of trademark rights?
The main sources of trademark rights are:
- the Trademark Law (22.362);
- the Paris Convention for the Protection of Industrial Property; and
- the Agreement on Trade-Related Aspects of Intellectual Property Rights.
1.2 How do trademark rights arise (ie, through use or registration)?
Trademark rights have a statutory basis and arise through registration. However, de facto trademarks have been accepted and recognised by the Argentine courts.
1.3 What is the statutory or other source of the trademark registration scheme?
Trademark rights derive from registration, as indicated by the Trademark Law. However, de facto trademarks are valid if:
- use has continued without interruption for a reasonable number of years; and
- a clientele has been built up around the mark.
2 What constitutes a trademark?
2.1 What types of designations or other identifiers may serve as trademarks under the law?
Any sign can serve as a trademark, provided that it does not fall under any of the prohibitions established by the Trademark Law.
2.2 What are the requirements for a designation or other identifier to function as a trademark?
Any sign with distinctive capacity may constitute a valid trademark. This rule is very broad and encompasses all signs, provided that they do not fall under any of the prohibitions established by the Trademark Law.
2.3 What types of designations or other identifiers are ineligible to function as trademarks?
The following are ineligible to function as trademarks:
- names, words or signs which constitute the usual and necessary designation of a product or service;
- names, words or phrases which have passed into general and common public use;
- the form of a product;
- the intrinsic colour of a product or a single colour applied to any product;
- signs which may induce error with regard to the nature, properties, merits, quality, manufacturing techniques, function, origin or any other characteristics of the goods or services;
- words, signs or drawings that are contrary to moral order and customs;
- words, symbols or designations used by the nation, the provinces or any other official body, as well as words, symbols and designations used by foreign countries and recognised international entities; and
- names, pseudonyms and portraits of persons, without their consent.
3 Registration procedure
3.1 Which governing body (ie, trademark office) controls the registration process?
The registration process is controlled by the National Institute of Industrial Property (INPI).
3.2 What fees does the trademark office charge for an application, during prosecution and for issuance of a registration?
Official fees are charged at the time of filing the application and when responding to certain official actions. There is no official fee for the issuance of the trademark certificate.
3.3 Does the trademark office use the Nice Classification scheme?
Although Argentina is not a part of the Nice Agreement, the Nice Classification of Goods and Services is used by INPI. The Trademark Class System is also available and can be used when filing online. Currently, the 11th Edition of the Nice Classification is applied.
3.4 Are 'class-wide' applications allowed, or must the applicant identify the specific goods or services for which the mark will be used?
Class-wide applications were allowed until recently; but applicants must now identify the specific goods or services for which registration is requested and for which the mark will be used.
3.5 Must an applicant have a bona fide intention to use the trademark for the goods or services identified in the application in order to apply for registration?
The Trademark Law contains no specific requirements in this regard. However, bona fide intent to use the trademark is considered to be implicit. All marks are filed to be used and the Trademark Law prohibits the registration of trademarks for the purpose of sale alone.
3.6 Does the trademark office perform relative examination of trademark applications (ie, searches for earlier conflicting marks)?
INPI conducts a thorough trademark search for earlier conflicting marks. All applications filed are searched and examined. This is performed at the substantive examination stage.
3.7 What types of examinations does the trademark office perform other than relative examination?
- Substantive examination of the trademark; and
- A formal examination to determine that all formal requirements are complied with.
3.8 Apart from confusion with a senior mark, descriptiveness and genericness, are there other grounds under which a mark is ineligible for registration, such as public policy reasons?
See question 2.3.
3.9 Is there a separate or supplemental register on which descriptive marks may be registered?
No. There is no separate or supplemental register on which descriptive marks may be registered.
3.10 Can a third party object to registration of a mark before the application has been published (eg, by letter of protest to the trademark office)?
No. This system is not available.
3.11 Must the applicant use the trademark commercially in order to obtain a registration?
The applicant need not use the trademark commercially to obtain registration, but use will eventually have to take place for the applicant to preserve its rights.
3.12 How much time does it typically take from filing an application to the first office action?
The usual time it takes for an application to move from initial filing to examination is between eight and 10 months.
3.13 How much time does it typically take from filing an application to publication?
The average time it takes for an application to publish is 15 days approximately.
4 Appeals
4.1 If the trademark office refuses registration, can the applicant appeal? If so, to what body and by what procedure?
Yes, an administrative appeal may be lodged before the president of the board of the National Institute of Industrial Property (INPI).
4.2 What is the procedure for appealing a trademark office refusal?
The process involves lodging an administrative appeal with all arguments and proofs upon filing. A decision is then issued by the president of the board of INPI.
4.3 Can the reviewing body's decision be appealed? If so, to what body and by what procedure?
Yes, if the rejection or negative decision is confirmed, this decision can in turn be appealed judicially before the federal courts.
5 Oppositions
5.1 Can a third party oppose a trademark application?
Yes.
5.2 Who has standing to oppose a trademark application?
Any party with a legitimate interest can lodge an opposition, whether or not it is the holder of a prior mark.
5.3 What is the timeframe for opposing a trademark application?
The timeframe for filing an opposition against a published trademark is within 30 days of publication in the Official Gazette.
5.4 Which body hears oppositions?
INPI is in charge of hearing oppositions.
5.5 What is the process by which an opposition proceeds?
There is a three-month term for both parties to try to negotiate an amicable withdrawal or settlement. If this is not possible, the opposition resolution procedure kicks in. The first step is for the opponent to ratify its opposition. This is the appropriate time for the opponent to enhance the grounds of its opposition and provide all necessary proofs. After this, INPI notifies the applicant for the latter to respond and to offer the corresponding proofs. Once both parties have been heard, an evidentiary stage is opened, after which summary pleas can be filed. Finally, INPI takes the file and issues the corresponding decision. INPI will decide solely whether the marks are confusingly similar.
5.6 Can the decision on the opposition be appealed? If so, to what body and by what procedure?
Yes, the decision as issued by INPI can be appealed before the Federal Chamber of Appeals. This is a judicial process.
6 Rights of registered and unregistered marks
6.1 What, if any, protection is afforded to unregistered trademarks?
De facto marks have been accepted by the jurisprudence – as stated in questions 1.2 and 1.3 – and confer the same rights as registered trademarks. They can also be enforced, provided that their status is duly proven.
6.2 What legal rights are conferred by a trademark registration?
A trademark registration confers the right to exclusively use the mark and to enforce it against third parties.
6.3 If there is a separate register for descriptive marks, what legal rights are conferred by registration therein?
No, there is no separate register for descriptive marks.
7 Enforcement and remedies for trademark infringement
7.1 What remedies are available against trademark infringement?
The main remedies available are:
- the embargo and/or seizure of infringing items;
- the destruction of infringing items; and
- damages.
7.2 What remedies are available against trademark dilution?
See question 7.1.
7.3 Does the law recognise remedies against other harms to trademark rights besides infringement and dilution?
No.
7.4 What is the procedure for pursuing claims for trademark infringement?
Trademark infringement proceedings are commenced before the federal courts. This process may or may not start with a preliminary injunction, which is an ex parte procedure.
7.5 What typical defences are available to a defendant in trademark litigation?
The typical defences available or arguments used by defendants in trademark litigation are as follows:
- There is no identical trademark being used;
- No dilution or damage has been caused; or
- There has been no reduction in sales for the rights holder.
7.6 What is the procedure for appealing a decision in trademark litigation?
Decisions are appealed directly before the same lower court that issued the decision, whose ruling is then substantiated before the Chamber of Appeals. Appeals must be filed within a five-day term.
8 Maintenance and removal of registrations
8.1 What is the length of the initial term of registration and what is the length of renewal terms?
The initial trademark term is 10 years, counted from the date of grant.
8.2 What, if anything, must be submitted to the trademark office to maintain or renew a registration?
A mid-term declaration of use in local commerce within the last five years must be lodged. A declaration of use must also be lodged upon renewal. No evidence need be submitted.
8.3 What are the grounds for cancelling a trademark registration?
Lack of use within a five-year term, counted as from the date on which the cancellation petition is entered. In case of nullity, the claimant must show:
- the bad faith of the rights holder; and/or
- that the rights holder should have known about the prior existence of the mark under the claimant's name.
8.4 Under what circumstances may the trademark office cancel a registration on its own initiative?
The National Institute of Industrial Property (INPI) can only cancel a registration if it is contrary to the terms of the Trademark Law.
8.5 What is the procedure by which a third party may seek cancellation of a trademark registration?
Cancellation for lack of use is an administrative proceeding that takes place before INPI, in which both parties are heard, proofs are produced and a decision is entered. Nullity cases are judicial proceedings that take place before the federal courts. A mandatory mediation process must be exhausted beforehand.
8.6 What is the procedure for appealing a decision cancelling a registration?
In case of cancellation, the appeal must be filed directly before the Federal Chamber of Appeals and in nullity cases it must be lodged before the lower court. In both instances, the appeal must be substantiated before the Chamber of Appeals.
9 Licensing
9.1 Are there particular requirements, such as quality control by the licensor, for a trademark licence to be valid?
No, there is no such requirement in the Trademark Law.
9.2 Must trademark licences be recorded with the trademark office or other governing body?
This is not mandatory, although it is suggested for fiscal or tax purposes.
9.3 Can a licensor lose its rights in a trademark by failing to comply with its obligations under the licence, such as maintaining quality control?
Yes, if this is established in the contract. However, no such provision exists in the Trademark Law.
10 Protection of foreign trademarks
10.1 Under what circumstances may foreign trademarks not registered in the jurisdiction be enforced (eg, under unfair competition law)?
According to the Trademark Law, trademark rights are territorial, so it is difficult to enforce unregistered marks. It is generally recommended to apply for the mark locally and thereafter to enforce it judicially through the nullity procedures.
10.2 Does the trademark office permit registration of a mark based on a foreign or international (Madrid) registration?
Argentina is not part of the Madrid system. However, priority rights are recognised if they are based on a valid foreign or international registration.
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.
