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.
In Argentina, confidential information and trade secrets are protected by Section 39.2 of the Agreement on Trade-Related Aspects of Intellectual Property Rights, Section 156 of the Argentine Penal Code, Law 24,766 (the Confidentiality Law) and the recently passed Emergency Decree 274/2019, which regulates different unfair competition aspects. This article provides an overview of the Argentine trade secrets legal regime.
The rapid growth in internet use has given rise to conflicts between registered trademark owners and third parties using said marks. For example, search engine advertising systems make it possible to create ads that show products or services to users who are looking for them. Federal Court of Appeals in Civil and Commercial Matters case law provides useful guidance on the use of third-party trademarks as keywords in internet advertising.
Until the approval of Emergency Decree 274/2019 in April 2019, the regulation of unfair competition in Argentina was characterised by a lack of organisation, narrow scope and lack of a general rule for standardising acts of unfair competition. The new decree sets out numerous provisions that are relevant to the IP field, including provisions addressing the regulation of comparative advertising, designations of origin, secrecy, data exclusivity and trademarks.
The protection provided under industrial property law to commercial signs registered with the National Institute of Industrial Property is more effective than that offered by unfair competition law. It is therefore worth questioning whether unfair competition law exercises any function with regard to the protection of registered signs. There may be sectors in which the protection of a rights holder's interest requires the combined use of IP and competition law.
Since the Trademark Law reserves the right to use a trademark for the mark's owner, legal scholars in Argentina have long debated whether the use of trademarks in comparative advertising is permitted. With the recent approval of Emergency Decree 274/2019, legislation has, for the first time, addressed comparative advertising in Argentina in a detailed and systematic manner and established when it is allowed.
Emergency Decree 274/2019 has established a comprehensive system for regulating unfair competition. Many practices punished by the new unfair competition rules affect IP rights. Further, the new legislation establishes a series of provisions that are highly valued in the IP field, including the detailed regulation of comparative advertising and provisions referring to names of origin and trade secrets.
Law 25,163/1999 and Law 25,380/2000 govern appellations of origin in Argentina for wines and wine-based spirits as well as agricultural and food products, respectively. The Ministry of Production and Labour recently acknowledged a new appellation of origin for a sweet quince paste produced in San Juan that is part of the local culinary tradition and whose characteristics derive from the manufacturing process and the quality of the quinces produced in the province.
The terms 'corporate name', 'trade name' and 'designation' are frequently used without distinction in commerce and business. However, these expressions must be clearly distinguished. While corporate names distinguish corporations and their use and protection are based on the Companies Law, designations are protected under the Law on Trademarks.
The Argentine Executive Power recently issued Decree 27/2018, which has introduced significant and substantial amendments to the Law on Trademarks, the Law on Patents and the Industrial Model and Design Decree 6,673/63. The most important amendments include a simpler registration process, an expansion of the facts that do not destroy novelty and adjustments to renewal and grace periods.
The government recently issued a decree which introduced substantial changes to the trademark opposition system, empowering the National Institute of Industrial Property to settle disputes concerning oppositions that parties cannot resolve through negotiation. The changes include the establishment of a three-month term to obtain oppositions and a 40-day evidence period.
The Health Authority examines all relevant information to decide whether to authorise a product's introduction to the market, including its trademark or product name. In this regard, the Health Authority considers potential health risks that could occur in the event of confusion and error as regards trademarks or product names and how such confusion could affect physicians, pharmacists and consumers.
Decree 27/2018 was recently issued with the aim of further reducing and simplifying the regulations of different regimes in order to improve commerce and industry. In the IP sphere, the decree introduced important and substantial changes to the trademark opposition system. As a result, the administrative authority will be empowered to settle disputes concerning oppositions that cannot be resolved between the parties by means of negotiation.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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.
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’.
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 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.
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.
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.
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.