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.
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.
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.
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.
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.
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.
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.
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.
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.
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 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.
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.
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.
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.
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.
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.
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.
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.
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).
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.