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.
Trademark rights have a statutory basis and arise through registration. However, de facto trademarks have been accepted and recognised by the Argentine courts.
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.
Any sign can serve as a trademark, provided that it does not fall under any of the prohibitions established by the Trademark Law.
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.
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.
The registration process is controlled by the National Institute of Industrial Property (INPI).
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.
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.
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.
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.
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.
- Substantive examination of the trademark; and
- A formal examination to determine that all formal requirements are complied with.
See question 2.3.
No. There is no separate or supplemental register on which descriptive marks may be registered.
No. This system is not available.
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.
The usual time it takes for an application to move from initial filing to examination is between eight and 10 months.
The average time it takes for an application to publish is 15 days approximately.
Yes, an administrative appeal may be lodged before the president of the board of the National Institute of Industrial Property (INPI).
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.
Yes, if the rejection or negative decision is confirmed, this decision can in turn be appealed judicially before the federal courts.
Yes.
Any party with a legitimate interest can lodge an opposition, whether or not it is the holder of a prior mark.
The timeframe for filing an opposition against a published trademark is within 30 days of publication in the Official Gazette.
INPI is in charge of hearing oppositions.
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.
Yes, the decision as issued by INPI can be appealed before the Federal Chamber of Appeals. This is a judicial process.
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.
A trademark registration confers the right to exclusively use the mark and to enforce it against third parties.
No, there is no separate register for descriptive marks.
The main remedies available are:
- the embargo and/or seizure of infringing items;
- the destruction of infringing items; and
- damages.
See question 7.1.
No.
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.
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.
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.
The initial trademark term is 10 years, counted from the date of grant.
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.
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.
The National Institute of Industrial Property (INPI) can only cancel a registration if it is contrary to the terms of the Trademark Law.
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.
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.
No, there is no such requirement in the Trademark Law.
This is not mandatory, although it is suggested for fiscal or tax purposes.
Yes, if this is established in the contract. However, no such provision exists in the Trademark 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.
Argentina is not part of the Madrid system. However, priority rights are recognised if they are based on a valid foreign or international registration.
