Mr Daniel R Zuccherino

Daniel R Zuccherino


Company & Commercial

Trade Secrets Protection
Argentina | September 01 2009

Trade secrets or confidential information regimes grant protection to valuable secret commercial information from misappropriation by third parties. Such regimes constitute an adaptive discipline seeking to respond to increasing employee mobility, changing technology and rising entrepreneurial activity. In Argentina, trade secrets are protected by Section 156 of the Penal Code and the Confidentiality Law.

IT & Internet

Court issues new judgment on liability of search engines
Argentina | December 18 2012

With the development of the Internet, existing legal regulations have often been rendered obsolete, presenting situations for which there is no appropriate legal rule or regulation. Each case must therefore be assessed individually, applying the general rules of the Civil Code and, in particular, those regulating fault-based liability. The court of appeals recently examined the liability of search engines for the content of third-party websites.

Court of appeals issues important judgment on new technologies
Argentina | December 21 2010

The Internet frequently renders existing legal regulations obsolete, generating situations for which there is no appropriate legal rule or even cases where there is absolutely no legal regulation. When a singer filed a complaint against web search engines for linking to websites that associated her image or name with sexual content, the court was faced with new liability issues which are not yet subject to any specific regulation.

Intellectual Property

Effect of new decree on industrial property and trademark law
Argentina | March 12 2018

A recently issued decree aims to further reduce and simplify the regulations of relevant regimes in order to provide an efficient response to requests for the exercise of commerce and the development of industry. Among other things, the decree simplifies the trademark opposition procedure; implements the administrative resolution of oppositions, nullity and cancellation for non-use actions; and requires proof of use for registered trademarks.

Likelihood of confusion of pharmaceutical trademarks
Argentina | December 18 2017

Argentine law contains no specific rules on the risk of confusion regarding pharmaceutical products and legal commentators and case law provide opposing views of whether common or stricter criteria should be applied. In this context, the most recent legislation and judicial decisions recognise that each particular case should be analysed separately in order to determine which criteria should be applied.

Trademarks and pharmaceutical products – an overview
Argentina | October 23 2017

The pharmaceutical industry is a regulated activity in the sense that medicaments require government authorisation in order to be commercialised. As a result, registering a trademark with the Trademark Office is insufficient to guarantee its use on a pharmaceutical product, as the name of the medicament must be accepted by the Health Authority at the time of issuance of the required marketing and sales authorisation.

Domain name and trademark dispute resolutions
Argentina | May 15 2017

The Internet's introduction, boom and speed of development has resulted in many conflicts and abuses, including the registration of domain names featuring the unauthorised use of a trademark owned by a third party. Argentina has not yet issued a substantive ruling referring to disputes between domain names and trademarks. Until 2009, the interested parties in a conflict had to seek remedy in court due to the non-existence of an alternative dispute resolution system.

Repair of damages in trademark infringement
Argentina | March 20 2017

IP rights – including rights to a trademark – enable rights holders to exploit certain intangible assets exclusively. In the event of misappropriation or trademark infringement, the trademark owner subject to the infringement will suffer damage due to the fact that a third party is using a similar or identical trademark without its consent. In this regard, the courts must adopt broad criteria when repairing damages, even when it is difficult to prove the effect of the damages concretely.

Recovery of intangible property rights under Civil and Commercial Code
Argentina | January 09 2017

The new Civil and Commercial Code includes a series of rules referring to intellectual and industrial property matters, including rules referring to image rights, the names of legal entities, the marital community regulation and a series of regulations regarding intellectual and industrial property and franchise, concession and leasing agreements. The code also has a significant impact on the recovery of intangible property rights.

Industrial models and designs: protection alternatives
Argentina | October 17 2016

In order to be registered under Decree 6,673/63, industrial models and designs must comply with certain ornamental and novelty requirements and must not be forbidden by law. If an industrial model or design is substantially aesthetic, it is also possible to register it under Law 11,723 on Intellectual Property (Copyright). Double protection is possible, but a rights holder cannot claim protection under both laws simultaneously.

Intellectual property under new Civil and Commercial Code
Argentina | August 01 2016

The new Civil and Commercial Code includes a number of IP regulations. Several sections of the code refer to IP matters that govern agreements, including the concession agreement, which is a type of contractual agreement that has gained increasing importance in Argentina. The new code also deals with IP rules set out in the marital community regulation.

Intellectual property and franchise and leasing agreements
Argentina | May 16 2016

A number of regulations governing agreements in the new Civil and Commercial Code refer to IP-related matters. This is especially true for franchise and leasing agreements. The code provides that under a franchise agreement, the franchisor must be the exclusive rights holder of its trademarks, patents, commercial names and copyrights or have the right to confer the right of use and transmission of these IP rights to the franchisee.

Image rights under new Civil and Commercial Code
Argentina | March 28 2016

Section 53 of the new Civil and Commercial Code addresses image rights in terms similar to Section 31 of the Intellectual Property Law. However, Section 53 is broader and covers visual, auditory and audiovisual registrations. Under Section 53, the rights holder's consent is required not only for the reproduction or publication of an image or voice, but also for the capturing thereof.

Protection of innovations: patents and trade secrets
Argentina | January 25 2016

The legal regimes for patents and trade secrets aim to stimulate creative and innovative activities – the former by recognising exclusive rights and punishing their violation, and the latter by preventing certain conduct, such as misappropriation or breach of contract, which may affect confidential information. When it comes to protecting new technologies, it can be difficult to decide between the trade secret regime and patent protection.

Comparative advertising under new Civil and Commercial Code
Argentina | November 16 2015

Comparative advertising was previously rarely used in Argentina due to the uncertainty and risk that it entailed, as the country lacked specific regulations in that regard. Under the new Civil and Commercial Code, comparative advertising is now regulated from a consumer law perspective. The code prohibits comparative advertising that lacks objectivity and leads the consumer into error.

IP rights under new Civil and Commercial Code
Argentina | August 31 2015

The new Civil and Commercial Code recently came into effect. It contains a number of regulations that are relevant to intellectual property, including provisions on comparative advertising, image rights, corporate names, designations and trademarks. Laws with mercantile content will continue to supplement the new code.

Benefits of test data protection
Argentina | June 22 2015

Legal protection for intellectual property constitutes a fundamental tool for generating the proper incentives for investment in research and development (R&D). On the contrary, poor protection and restrictive criteria discourage investment in R&D. Test data protection acts as a unique incentive to promote R&D and improve the quality of pharmaceutical products.

Criteria to determine likelihood of confusion of trademarks
Argentina | April 20 2015

In many cases a trademark cannot be registered, even if it is distinctive enough in itself. This occurs when registration is sought for a trademark that is identical or similar to one already registered. A recent Federal Court of Appeals in Civil and Commercial Matters decision highlights four fundamental principles to take into consideration when determining the likelihood of confusion of trademarks.

New Civil and Commercial Code and industrial property rights
Argentina | February 16 2015

Trademark and patent laws are supplementary to the Commercial Code in Argentina. Recently passed legislation has approved the new Civil and Commercial Code, and will repeal the existing Civil and Commercial Codes. This update examines what will happen to industrial property laws and related regulations when the new code comes into effect.

IP rights, new technologies and their legal regulation
Argentina | January 12 2015

Several courts, including the Supreme Court of Justice, have recently issued a series of decisions which have had significant impact on IP rights, new technologies and their legal regulation. Among other things, they have established a criterion that search engines are not responsible for the content of websites published by third parties.

The meaning of 'new' in TRIPs
Argentina | November 03 2014

Patents and test data protection are unrelated types of IP right under the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs). No TRIPs rule allows for the establishment of a correlation between both rights so as to require that the product be 'novel' under the Patent Law. However, it has been erroneously suggested that the word 'new' in relation to test data could be understood in the same way as it is in patent provisions.

Creation of a new register in the INPI
Argentina | September 15 2014

The National Institute of Industrial Property recently issued Resolution 117/2014 which creates a new register aimed at registering technology transfer agreements and licences of trademarks, patents, utility models, industrial models and designs between natural or legal persons domiciled in the country and where these acts are carried out by natural or legal persons domiciled in Argentina in favour of their foreign-domiciled counterparts.

The originality requirement in trademark law
Argentina | June 09 2014

Under Argentine law, a mark can be registered as long as it has "distinctive capacity". This concept has two components: the intrinsic capacity to identify, which refers to the sign's ability to identify when considered in itself (originality); and the extrinsic capacity to identify, understood as the sign's distinguishability from other existing signs (novelty).

Protection of de facto trademarks
Argentina | March 31 2014

Judges have afforded protection to parties who have not registered a sign, but have long used it, thus consolidating its position in the market and creating goodwill. In exceptional situations, the courts have granted the owner of such de facto trademarks the right to obtain an order preventing third parties from using the trademark. The Federal Court of Appeals in Civil and Commercial Matters recently considered one such case.

Federal court issues positive decision for trademark owners
Argentina | January 27 2014

Penalties for infringement of a trademark owner's exclusive rights include prison sentences of between three months and two years, plus the possible application of fines. However, when cases involving the public sale of products bearing a forged trademark reach the criminal courts, proper penalties are often not applied. A recent federal court decision could indicate a positive change of direction in this area.

Calculation of amount claimed in trademark infringement cases
Argentina | November 11 2013

In many trademark infringement cases, it is difficult to assess or determine the amount claimed as damages at the time at which the complaint is filed, since that assessment or determination is based on the production of relevant evidence and can therefore occur only at later stages in the legal procedure. Division I of the Federal Court of Appeals in Civil and Commercial Matters recently considered one such case.

Biotechnological patents and patentability of genes
Argentina | September 09 2013

The biotechnology field has experienced groundbreaking advances in the last few decades, and it is in biotechnological patents that one of the most significant challenges arises. Among these issues, one of the most controversial is whether genetic material is patent eligible. In Argentina, genetic material is excluded from patentability only when it is used in biological processes inherent in animal, plant or human reproduction.

Patents in need of provisional protection
Argentina | July 08 2013

Under Article 35 of the Patent Law, patents are granted for a non-extendable term of 20 years, counted from the application filing date. Following recent technological advances, it is more important than ever that patent protection be obtained as soon as possible, before further advances make the invention obsolete. Obtaining proper legal advice will help patent applicants to avoid unnecessary delays.

Court rules on liability of internet search engines for trademark use
Argentina | April 29 2013

The liability of internet search engines has been the topic of a number of judicial decisions in Argentina. However, a recent judgment differs somewhat from those that preceded it, both in that the protection of personal non-transferable rights was not claimed and in relation to the nature of the affected rights. The case concerned unauthorised use of a registered trademark in the context of an internet search.

Making your mark: implications of comparative advertising
Argentina | February 25 2013

Over the past few decades, comparative advertising has become widely used in a number of countries, including the United States. However, as Argentina lacks specific regulation on the subject, its use is still rare in the country. It is clear that until specific legislation has been enacted in this regard, any comparative advertising activity will entail risks that trademark lawyers and advertisers alike will find difficult to evaluate.

Appraisal of the claimed amount in cases of patent infringement
Argentina | October 15 2012

A recent judgment rendered by the Federal Court of Appeals in Civil and Commercial Matters provides a good example of how courts should behave in cases of patent infringement. The court analysed the requirement of appraising the claimed amount when filing a complaint for patent infringement and held that a quantification of the claimed amount could be seriously established only once evidence had been produced.

Improper use of trademarks: settling domain name conflicts out of court
Argentina | May 14 2012

Trademarks play an essential role in the domain name field, with the owners of trademark rights acting as the main promoters of the regulatory process. Until recently, such conflicts could only be settled in court. However, following the introduction of a new rule to the resolution on domain name registration, it is now possible to settle domain name disputes out of court, with NIC Argentina acting as the enforcing authority.

Court rules on admissibility of preliminary injunction
Argentina | November 07 2011

The Federal Court of Appeals in Civil and Commercial Matters recently granted a preliminary injunction against a registered trademark on the basis that it is prima facie identical to a well-known trademark owned by a third party. This ruling was particularly unusual as the plaintiff had not registered the trademark in Argentina, but the defendant had registered the trademark in Argentina.

Court evaluates likelihood of confusion among pharmaceutical trademarks
Argentina | November 07 2011

The Federal Court of Appeals in Civil and Commercial Matters recently rejected a request for cessation of opposition to a trademark on the grounds that the two competing trademarks were in the same class and both referred specifically to medication. The court further held that the marks in question had more similarities than differences and thus did not comply with the requirement of being clearly distinguishable.

Court's decision confirms lack of protection of test data
Argentina | August 22 2011

The Federal Court of Appeals recently confirmed the rejection of a plaintiff's request that test data submitted abroad for the approval of an original pharmaceutical product be protected in Argentina in accordance with Article 39.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights. This decision confirms the lack of protection of test data in Argentina.

Court decides on acquisition of distinctiveness
Argentina | June 06 2011

Determining whether a trademark qualifies for protection depends on its distinctive capability. In this sense certain signs are considered unregistrable as trademarks because they are descriptive or necessary for the product or service in question. However, a federal appeal court recently held that in certain cases, signs which lack inherent distinctiveness can acquire distinctiveness and thus be registered as trademarks.

'Similarity-based approval' system ineffective for test data protection
Argentina | March 07 2011

Test data protection is one of the most interesting topics in the debate about IP rights. TRIPs establishes that test data required to approve the marketing of pharmaceutical or agricultural chemical products is protected against unfair commercial use. However, Argentine law on this issue does not offer effective data protection and, consequently, its literal interpretation is inconsistent with TRIPs.

Legal protection for databases
Argentina | August 16 2010

Within the framework of the technological revolution, a variety of new activities and industries have emerged, one of which is the compilation of information in databases. Databases have acquired paramount importance, mainly for their use in commercial activities. Given that the creation of such databases generally entails significant investment, their creators are always in search of the best legal protection.

IP rights and new technologies
Argentina | June 01 2010

While some IP rights (eg, trademark rights, patent rights and copyrights) go back many centuries, others have been acknowledged only more recently (eg, scientific data rights, plant breeders' rights and database rights). This is closely related to the technological revolution that took place in the second half of the 20th century. This update looks at the legal protection of plant breeders' rights and software or computer programs.

Scientific data protection: a new and autonomous IP category
Argentina | March 22 2010

Article 39.3 of the Agreement on Trade-Related Aspects of Intellectual Property Rights establishes a series of requirements that, once present, create an obligation for member countries' governments to protect scientific data against unfair commercial use. The Confidentiality Law is supposed to implement Article 39.3; however, the law allows third parties to rely on the scientific data of a product that has already been approved.

The TRIPs Agreement and aspects of patent prosecution in Argentina
Argentina | January 25 2010

Following adoption of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPs), several changes were introduced to adapt Argentine legislation to the agreement's minimum standards (eg, the term of patent protection and the availability of patent rights in all fields of technology). This update looks at how the TRIPs Agreement has been implemented into the Argentine patent regime.

First Scent Trademark Registered
Argentina | November 09 2009

If a certain product provides the container thereof with a distinctive scent, the party marketing that product will logically try to obtain the exclusive right to that scent. The appropriate way to obtain such exclusivity is by registering the scent as a trademark. The National Institute of Industrial Property recently registered its first scent trademark to be applied to the container of a product in Argentina.

Unfair Competition and Comparative Advertising Legal Regimes
Argentina | June 15 2009

Many unfair competitive practices affect IP rights (eg, acts of imitation which lead to confusion by taking fraudulent advantage of a competitor's effort and reputation through the use of identical or similar distinctive signs). However, as such acts are governed by a number of different legislative statutes, the regulatory approach is unsystematic and contradictory.

Maintaining Data Exclusivity
Argentina | April 14 2009

When the Confidentiality Law was enacted, it was assumed that it would bring Argentine local legislation into line with the requirements of Article 39(3) of the Agreement on Trade-Related Aspects of Intellectual Property Rights, which establishes the obligation to protect scientific data filed with the health authorities. However, the law fails to grant adequate legal protection to scientific data.

The Battle against Trademark Piracy
Argentina | February 16 2009

Argentina is battling trademark piracy on two major fronts. The first is the marketing of counterfeit merchandise in fairs that do not comply with legal formalities and where it is difficult to bring legal actions. The second is the import of counterfeit products through the border.

Patent Office Issues New Resolutions
Argentina | October 20 2008

Adequate patent protection requires proper legal enforcement. The Argentine Patent Office (INPI) faces a major backlog of patent filings because the number of applications that the INPI has resolved is significantly lower than the number of applications that have been filed. In order to address such problems, the INPI recently enacted two new resolutions.

Amendment to Consumer Protection Law and its Effect on IP Rights
Argentina | August 18 2008

The Consumer Protection Law was amended by Law 26,361 on March 12 2008. The amendment broadens the scope of application of the Consumer Protection Law by considerably expanding the concept of ‘consumer’ and modifying the scope of the so-called ‘consumption relationship’.

Patentability of Second Medical Uses
Argentina | June 16 2008

The Patent Act sets forth that inventions are patentable “as long as they are novel, involve inventive activity and are susceptible to industrial application”. This provision applies clearly in the case of an inventor who finds a property or use in a product or active principle which was unknown up to that moment. However, what happens in relation to new uses of an existing product?

Recent IP Developments
Argentina | March 03 2008

Recent IP developments in Argentina have included improvements in the protection of trademark owners’ rights and serious steps backwards in the legal protection of data exclusivity and the granting of preliminary patent injunctions. These situations are all related to the adequate enforcement of existing rules.

Media, Marketing, Sports & Entertainment

Advertising and comparative advertising under new Civil and Commercial Code
Argentina | July 20 2017

The new Civil and Commercial Code refers to advertising – including comparative advertising – in the context of the rules concerning consent in consumption agreements. From a legislative viewpoint, this does not appear to be the most advisable perspective, as comparative advertising – the most important effects of which concern competitor companies, rather than consumers – is central to the regulation of advertising.