Trademarks in Argentina in a nutshell

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 TML[1].

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).

For additional information on these or any other issues related to doing business in Argentina, please, sign up for our Legal Blog or contact us at any time.

Mario E. Castro Sammartino

[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.

Our publications exclusively express the author´s opinion and do not purport to be legal counsel on any case. Should you need it, you must consult with your trusted lawyer or may contact us at your convenience. If you liked the article, please, share it.

 

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