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27 January 2014
The legal rules in Argentina for ensuring the enforcement trademark owners' rights often turn out to be inefficient when they are not complied with and infringements are improperly punished. The absence of proper penalties encourages illegal behaviour and increases parties' motivation to ignore the legal regime.
Section 31 of the Trademark Law (22,362) lists the acts and actions that are punishable for infringing a trademark owner's exclusive rights. Penalties for such infringement include prison sentences of between three months and two years, plus the possible application of fines.
The subsections of Section 31 outline the most common crimes that are committed with regard to trademarks, such as forgery, fraudulent imitation and the possession of products with forged or fraudulently imitated trademarks. In particular, Section 31(d) applies to those who "place on sale, sell or in any other manner market products or services with a registered trademark which were forged or fraudulently imitated".
'Forgery or fraudulent imitation' implies the material manufacture of signs without authorisation, while the possession of products with forged or fraudulently imitated trademarks implies that such products have not yet been offered in the market. Section 31(d) refers to the period at which a product (or service) with a forged trademark is made available to the consumer. This encompasses all preparatory actions for the sale, including the exhibition of goods in establishments and fairs, sample delivery for promotion and all other aspects related to marketing (eg, sale, exchange, rent, assignment, donation).
When cases involving this type of conduct (eg, public sale of products with a forged trademark) reach the criminal courts, proper penalties are often not applied. However, a recent judgment of the Federal Criminal Court of Cassation could indicate a positive change of direction in this area.
Lower court decisions
A first-instance judge based in Tucuman Province decided to acquit an accused of having marketed products bearing a forged or fraudulently imitated trademark, arguing that consumers were not deceived since the offered products were obviously an imitation. The Tucuman Court of Appeals affirmed the decision.
The federal prosecutor appealed the resolution, arguing, among other things, that "whether copies are a crude imitation of the original is not important because, in the case at issue, the crime is committed with the marketing (of any kind) of a forged or fraudulently imitated product".
Federal court decision
On February 6 2013, in Díaz, Division III of the Federal Criminal Court of Cassation sustained the appeal filed by the federal prosecutor, thus unanimously revoking the previous decisions. Significantly, the court held that the legal interests protected by the Trademark Law are not exclusively those of consumers; the registered trademark owner's right is also protected. The court also held that the poor quality of the imitation products and the context in which they were offered for sale were not decisive factors for the application of Section 31(d).
The court's decision diverges from previous decisions of several Argentine criminal courts, which have not considered a trademark crime to have been committed in cases where the consumer could not have been deceived as the products offered for sale were clearly counterfeit.
The court held that Section 31(d) of the law should apply to the case, since the legal interests protected by the law were affected as a result of the infringement of the trademark owner's rights over its registered trademark, and argued that those who offer for sale, sell or otherwise market a forged or fraudulently imitated trademark should be punished.
For further information on this topic please contact Daniel R Zuccherino at Obligado & Cia by telephone (+54 11 4114 1100), fax (+54 11 4311 5675) or email (firstname.lastname@example.org). The Obligado & Cia website can be accessed at www.obligado.com.
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