Trademarks in Argentina

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Requirements - General Information

Law
Law Nº 22.362 of December 26th, 1980, effective February 1st., 1981 and Implementing Regulations 558/81, 1141/03.

Conventions
Paris Convention of March 20th, 1883, as amended at Stockholm on July 14, 1967. GATT TRIPS (Law 24.425)

Registrable

The following may be registered as trademark to distinguish goods and services: one or more words, with or without meaning; drawings; emblems; monograms; engravings; stampings; seals; images; bands; combinations of colors applied to a particular place on the goods or their packaging; wrappers; containers; combinations of letters and of numbers; letters and numbers insofar as they concern a special design thereof; advertising phrases, relieves having distinctive capacity and all other signs having such capacity.

Not registrable

The following are not registrable as trademarks:

a) The names, words and signs that conform the necessary or usual designation of the product or service, or which are descriptive of its nature, function, qualities or other characteristics;
b) The names, words or advertising slogans which have become of general use prior to the application for registration;
c) The shape given to products;
d) The natural or intrinsic color of the products or a single color applied over them;
e) A mark identical with or similar to one previously registered or applied for to distinguish the same products or services;
f) Foreign or local designation of origin, that is, the name of a country, region, place or geographical area that designates a product which is original of that place, the qualities and characteristics of which are derived from the geographical environment; it is also regarded as a designation of origin that that which refers to a certain geographical area determined for the sake of certain products;
g) Marks liable to lead to mistake with respect to the nature, properties, merit, quality, manufacturing methods, purpose, origin, price or other characteristics of the products or services they are intended to distinguish;
h) The words, drawings and any other symbol contrary to morals and custom;
i) The letters, words, names and symbols required to be used by the State, Provinces, Municipalities, religious and health organizations, and those used by other countries and international organizations recognized by the Argentine government;
j) The name, pseudonym or portrait of a person without his consent or that of his heirs up to the fourth degree inclusive;
k) Business names, including Assumed and Corporate names which describe a activity, to distinguish products (nevertheless, abbreviations in initials, words and other signs having distinctive capacity and forming part of such names may be registered to distinguish products or services);
l) Advertising phrases lacking originality.

Classification of goods

Trademarks are classified in accordance with the 8th Edition of the Nice Classification of goods and services used in most countries. A separate application is required for each class.

Procedure
Once the trademark application is filed and if the Trademark Office finds the formal requirements are fulfilled, its official publication for oppositions is ordered; within 30 days after such publication, said Office will determine the existence of previous similar trademarks. If neither oppositions are filed nor confusingly similar prior records or other absolute grounds for rejection are found, registration is granted. If an opposition is filed, the Trademark Office will give the applicant one year-time limit as of the date of notification to obtain the withdrawal of such opposition. In case the opposition were not withdrawn, the trademark application would be deemed abandoned, unless and within that time limit, a court action were instituted so as to get the opposition be declared groundless (see ‘Opposition’ in next chapter).

If a confusingly similar prior record or other absolute grounds for rejection are found, the Trademark Office may reject the application. The rejections issued by the Registrar may be appealed before Federal Civil and Commercial courts and must be filed at the Trademark Office within thirty working days of notification of rejection.

Opposition
The opposition system in Argentina is substantially different from that applied in most countries, in which the opponent and the applicant submit their grounds before the Trademark Office and the latter issues its decision in favor of one of the parties.

In our country, on the contrary, the Trademark Law considers that the opposition is a conflict between the parties and, therefore, the Trademark Office has no authority over this subject. However, in some cases which will be presented herein below, maintains the right to review a given situation.

Oppositions must be filed within thirty days as of publication.

Once an opposition is filed against a trademark application, the Trademark Office notifies of same to the applicant and grants one-year term to obtain the withdrawal of said opposition or to resort to the Federal Courts so that the latter may decide that said opposition is unfounded.

Nevertheless, the withdrawal of the opposition is generally obtained by means of an amicable agreement reached with the opponent, which agreement results from preliminary negotiations carried out between the parties. These agreements may be of diverse nature, although in most cases, they are reached through a limitation in the scope of the protection, the exclusion of any product or service, an undertaking of use of the trademark in a certain manner, among others.

The point is that before the one-year term is due, the applicant must submit before the Trademark Office evidence that an agreement has been reached with the opponent which enables the registration of the trademark or else that the conflict has been submitted to a court of law. If none of these alternatives is presented, the Trademark Office declares the abandonment of the application.

In the first case, that is when the applicant evidences that an agreement with the opponent was reached, usually after that the trademark is to be granted. However, we have to point out that the Trademark Office is not compelled to accept private agreements and may even reject them and deny the registration of the trademark whenever it considers that those are in breach of the law or against public interest.

The achievement of these agreements may be reached either by means of a voluntary negotiation between the parties or else by a mediation process; this process will be dealt with herein below.

In the lack of any agreement with the opponent, as stated above, the only alternative available to the applicant is to file a legal action before a Federal court, to seek that the opposition be declared unfounded.

In order to resort to any judicial action, the applicant must previously comply with a mandatory mediation proceeding, which shall have been finished before the one-year term stated herein above so as to be in condition to initiate the legal action or else submit the agreement before the Trademark Office within the granted term.

Frequently asked questions

Is there any possibility to postpone the term to file oppositions?
Productos químicos destinados a la industria, la ciencia, la fotografía, la agricultura, la horticultura; la silvicultura; resinas artificiales y sintéticas, materias plásticas en bruto (en forma de polvo, líquido y artificiales); composiciones para extintores; preparaciones para el temple y soldaduras de metales; productos químicos destinados a conservar los alimentos; materias curtientes; sustancias adhesivas destinadas a la industria.
Is it necessary to offer evidence with the opposition-filing writ?
It can be done but it is not strictly necessary and, in fact, evidence is offered in very few cases. In order to file any opposition, it is sufficient to present the grounds on which said objection are based. Evidence shall be required when the conflict must have to be decided through a legal action. It will also turn out useful during the negotiations between the parties but this depends on each particular case.
Can grounds be widened/amended once the opposition is filed?
Yes.Grounds for the objection may be amended/widened both at administrative as well as at judicial stages.
Can the one-year term to obtain the withdrawal of the opposition or to resort to a judicial action be extended?
No. Said term cannot be postponed. The one-year term is neither suspended nor interrupted in the event the mandatory mediation process is started.
Is it mandatory to carry out preliminary negotiations or is it possible to directly revert to court?
Negotiations are maintained exclusively taken into account the trademark owner’s benefit. Consequently in the event it is foreseen that said negotiations shall not render any satisfactory result, anyone may directly resort to the mediation proceeding. In fact, in many cases where the opponent is evidently not willing to negotiate, we consider it convenient to start the mediation proceeding as soon as possible, so as to exert pressure and to avoid an unnecessary delay.
Is it necessary to wait for the Trademark Office to notify the opposition to start negotiations with the opponent?
No. Since negotiations are carried out between the parties directly, it is possible to start same with the opponent without waiting for any official notification, which generally takes some months.
Is it necessary to wait for the complete one-year term to resort to court?
No. In the light of the answer given in the previous paragraph, it is up to the trademark applicant to decide when a fruitless negotiation must be ended.
What happens if the opponent does not attend a mediation hearing?
If the opponent fails to attend, the opposition continues. However, the mediator draws a record evidencing the compliance on the part of the trademark applicant and, hence, the latter is in condition to resort to court.
Is the Trademark Office compelled to accept any agreement reached by the parties?
The Trademark Office does not intervene in the mentioned process but has the right to review the agreements made between the parties. Said Office is obliged to take care of public interest and, therefore, it may happen that it does not accept coexistence agreements whenever trademarks are similar and may lead consumers to confusion. It is worth mentioning that any refusal from the Trademark Office may be appealed.

Duration and validity
The term of validity of a registered trademark shall be ten years as of the registration date. It may be renewed indefinitely for like periods provided it has been used, within five years preceding each expiry date, in the marketing of a product, the performance of a service, or as part of the company name.

Lapsing
The law will declare a trademark as lapsed when same is not used in the country for a period of five years as of its granting, unless there existed a reason of “force majeure” which precluded said use. The lapsing of a trademark is not automatic; it should only be requested by a third party evidencing a legitimate interest and by means of the filling of a complaint before the Federal Civil and Commercial courts. The five-year term is made effective as of a date prior to the initiation of the action.

The use of a trademark to distinguish a product or a service if sufficient to avoid the lapsing of the same registered mark for other goods or services in other classes. Likewise, the use of a trademark as part of a trade name will also avoid lapsing.

Please be noted that the law requires that the trademark be used “within” five years and not “during” said term.

Cancellation

Trademarks registered against the provisions of the Trademark Law are to be considered invalid. Apart from this generic ground for invalidation, the law establishes other two specific reasons to prevent trademark piracy and to avoid those registrations obtained for speculative reasons only. Hence, the invalidation is to be deemed when:
1) trademarks are registered by any person that, at the time of applying for the registration, knew or should have known that the trademark belonged to a third party,
2) trademarks which are registered by a person that deals in the sale of marks as usual activity.

The Statutory Limit for bringing a cancellation action is of 10 years as of the registration date except in cases of bad faith, when no lapsing of the action will occur.

Assignment

Trademarks may be totally or partially assigned; therefore a trademark can be assigned either for one good or service or for the entire range of goods or services protected by said registration. At the same, the law allows the co-ownership of a trademark. Consequently, the co-owner of a trademark may assign a percentage of its portion or the whole trademark.

Licensing of trademarks

Contracts for the licensing of trademarks subscribed by individuals or legal entities domiciled in our country shall be recorded before the Trademark Office only for information purposes, provided that said instruments comply with the legal requisites of our country.

However, licenses should be recorded before the Trademark Office so as to allow the licensee to deduct royalties paid to the licensor from their income tax statement.

Filing trademark applications

a) Complete name and address of the applicant;
b) Particulars of mark (except for word marks, five clear prints are required);
c) Specifications of goods or international classification;
d) Power of Attorney (see ‘Power of Attorney requirements’ below);
e) Priority document (when claiming convention priority: certified copy of the first filed foreign application).

Renewal of trademark

a) Power of Attorney (see below);
b) Sworn declaration of use (in case of urgency or convenience, it could be sent to us by fax or e-mail). Delay is not legally admissible nor is it possible to obtain an additional time limit for its presentation.

A trademark registration may only be renewed if the mark has been used in Argentina at any time within the five years preceding the expiration date. This requirement is fulfilled if the mark was used for any product or service whatsoever, in any of the classes, not necessarily those covered by the registration involved. Use of the mark as trade name is also sufficient.

Assignment

a) Assignment agreement entered into by both parties bearing the consular legalisation or "Apostille" of the transferor’s signature.
b) If the assignment agreement does not include any power of attorney, then a separate power of attorney on behalf of the assignee, should be sent apart from the agreement document above.
c) Argentine trademark certificate; in case of registered trademark.

Change of the owner’s name

a) Document certifying the change of company name bearing the consular legalization or "Apostille";
b) Power of Attorney (see below);
c) Argentine trademark certificate; in case of registered trademark.

Licenses

The necessary documents to be recorded in the case of licenses are as follows:

-Sworn declaration subscribed by the licensee containing detailed information on the licensed trademark (original and copy); -Simply copy of the contract in its original language. If in foreign language, the translation shall be made by an Argentine Sworn Public Translator;

-Additional copies of the contract (three complete sets in Spanish language shall be submitted); -Simple copy of the articles of incorporation or partnership agreement or power of attorney evidencing the signor’s capacity to act on behalf of the local company or sworn declaration of the Power of Attorney, if previously registered before the Power Register of the Argentine Trademark Office, in which case the referenced number shall be stated.

Power of attorney requirements

Consular legalization or "Apostille" is required. Argentina is member of the Hague Convention which deals with the exemption of foreign documents from consular legalization. Consequently, the public documents to be sent to Argentina from other countries which have also adhered to this Agreement, shall include an "Apostille" instead of the consular legalization.

Please note that a general power of attorney is admitted and we can use it to file any number of applications on behalf of the same client

Time limits to fulfill the requirements

Power of Attorney may be filed within forty working days counting from the filing date of the application, with additional official fees (see Schedule of Charges for final fees).

The priority document is to be filed with the corresponding translation into Spanish language, within a three-month term after the presentation of the application.