The current Argentine Trademark Law (No. 22,362) came into effect on 2 January 1981 (the previous law (No. 3,975) had been enacted on 23 November 1900).
The principal features of the Argentine Trademark System are as follows:
a) Attributive system;
b) trademark registration term : 10 years
c) Oppositions to applications is not resolved by the Trademark Office;
d) If opposition is unresolved by negotiation, Applicant's may initiate action for undue opposition in court;
e) Basis for opposition is broad. Any person with a "legitimate interest" can oppose a trademark application;
f) Trademark use is required for renewal of registration and to prevent a cancellation action (at any time during the 5 years prior to the event).
g) The meaning of use is broad;
h) Registration or application may be void if registrant or applicant knew or should have known the trademark belonged to another party;
i) Seizure of products bearing mark is allowed;
j) International Classification.
Argentina follows, in principle, the attributive system where the right in a given trademark comes into effect with the proper registration. This principle may be attenuated in certain circumstances, such as when the applicant claims priority.
The procedure involved in applying for and obtaining the grant of a trademark registration has the following stages:
One is strictly administrative at the Trademark Office. This may lead to the grant of a registration if there are no oppositions by third parties, or if there are oppositions which are effectively negotiated and withdrawn, and if there are no Office actions, or if there is an Office action but Applicant satisfactory answers it.
If an opposition is not withdrawn or if the Office action leads to a formal rejection of the application, the Applicant's only recourse is to take the matter to the courts.
Since the enactment of Law No. 22,362 Argentina has adopted the International Classification (Agreement of Nice), and therefore service marks were incorporated into local practice.
The current trademark system also shows the following features:
(a) use of a trademark has become necessary to avoid the forfeiture of a registration;
In conformity with Articles 5 and 26, a granted registration must meet use requirements (i) at the time of applying for renewal (every 10 years); and (ii) when a third party brings a court action claiming cancellation due to non-use. In both instances, the holder of the trademark must show that at any time within 5 years immediately preceding the renewal application or the initiation of a cancellation action, as the case may be, the trademark was actually used.
The law considers that "use" of a trademark could involve:
(1) The marketing of any product. This means that sales made with respect to one product preserve the validity of the registration explicitly covering that product, but also all registrations covering any other product. For example, the use of the trademark IBM in connection with computers is sufficient use to preserve the owner's rights with regard to registrations for IBM for chemicals in Class 1, or foodstuffs in Classes 29 and 30, etc.
(2) With regard to goods, the use in connection with a service will be sufficient;
(3) The use of a trademark as a trade name or part thereof also complies with use requirements.
This illustrates the degree of flexibility of the Argentine statutory provisions which admit a wide range of uses to avoid the lapsing of a registration since even the complete absence of use of a trademark would not affect its validity if the mark is at least use as a corporate name or part of it.
(b) Another novel feature of the current Argentine Trademark Law is contained in two paragraphs of Article 24, according to which a trademark registration is null and void when "b) it was registered by someone who knew or should have known that the trademark belonged to a third party at the time the application for registration was made; and when c) it was registered for subsequent sale by anyone who usually registers marks for such purpose."
The first of these two provisions created a series of court decisions inspired by equity and fair trade principles, which are obviously the underlying principles of the legislation. Such decisions were generally issued in cases in which the owners of foreign trademarks sued local residents who had appropriated such trademarks by means of earlier registrations. This legal provision, of course, amounts to a strong protection to foreign parties. It takes into account the rapid and easy spread of information in today's world, where through the speed of modern media a trademark may be known in a country before any attempt to obtain registration is made by the legitimate owner. This provision is an advanced tool in the fight against trademark piracy. It goes further than the Paris Convention, which requires notoriety in the country where the conflict arises.
The second provision, i.e. that included in paragraph c) of Article 24, aims at preventing that trademarks become a mere article of commerce. The old Argentine statute was often construed to require no use of a trademark in order to maintain the registration rights. This led to the existence of several firms whose only business was to keep trademark registrations for sale. Such sales were often imposed on applicants since they would otherwise run the risk of rejection based on confusing similarity with registrations kept by these firms in an inactive pool of articles of commerce. This, of course, was contrary to the reason supporting the existence of registered trademarks as distinctive signs for products or services to be used in actual businesses.
The last novel feature of the current Trademark Law which deserves attention is that providing a public nature to the right of action against infringers of trademarks or corporate names. While the old Law also contemplated civil and criminal actions against infringers, the criminal process could only be started and prosecuted by the owner of the affected trademark rights, and in the absence of a specific petition by such person the court or official prosecutor could do nothing. The right of action was of a strictly private nature. The new Law, however, makes this action "public", which means that it may be initiated "ex officio" by the court or the public prosecutor merely knowing of a given trademark registration and of a certain case of infringement. Such knowledge could be the result of a notice entered by the affected party who does not want to be involved in the expenditure of time and money that the prosecution entails. Such rules are also particularly useful in cases of infringements involving several territorial jurisdictions within the country.
Note: The above are excerpts from an article by M. A. Etcheverry entitled "Recent Developments of Industrial Property Rights in Argentina" published in the California Western International Law Journal, Volume 17, Number 2, p. 310-319 (1987).
Published in Euromoney´s
Managing Intellectual Property
Trademark Yearbook, 1996.