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 19,550, designations are protected under the Law on Trademarks 22,362. Further, Law 11,867, which regulates transfers of industrial and commercial establishments, employs the term 'trade name'.
Court decisions and Argentine doctrine of the authors consider designations and trade names to be IP rights.
Section 27 of the Law on Trademarks establishes that "a name or sign designating a profit-making or non-profit-making activity shall constitute property for the purposes of this law". However, this does not imply the possibility of registering designations.
According to Section 28 of the Law on Trademarks, designation ownership is attained through use and only in relation to the field in which it is used. Further, the designation must be unmistakable compared with those pre-existing marks in the same field.
Clearly, if a commercial designation acquires a certain degree of renown in the public sphere, it also obtains specific economic value.
Regarding the territorial scope of commercial designations, while a trademark's protection applies in the entire country and classes in which it is registered, designations are valid in the territory where they have effective influence and in the specific types of activity in which they are used.
Section 29 of the Law on Trademarks sets out a right of opposition in favour of designation owners when a designation is used by a third party.
Section 151 of the Civil and Commercial Code applies to the names of all legal persons – including companies – and establishes that said name should:
meet the requirements of veracity, novelty and distinctive capacity, both in relation to other names, such as marks, fancy names and other ways to refer to goods or services, whether or not they are related with the purpose of the legal person.
Although Section 151 includes no specific reference to 'commercial designations', which have their own legal regime and individuality, they arguably fall under "fancy names or other ways to refer to goods or services" and therefore within the scope of Section 151 of the Civil and Commercial Code.
For further information on this topic please contact Daniel R Zuccherino at Obligado & Cia by telephone (+54 11 4114 1100) or email ([email protected]). The Obligado & Cia website can be accessed at www.obligado.com.
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