We would like to ensure that you are still receiving content that you find useful – please confirm that you would like to continue to receive ILO newsletters.
25 February 2013
Over the past few decades, comparative advertising(1) 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, due to the inherent uncertainty and risks involved.
Several rules have been applied to comparative advertising in Argentina, including:
Article 4 of the Trademark Law (22,362) establishes that "the ownership of a trademark and its exclusive use are obtained by means of its registration". The law reserves the exclusive use of a trademark to its owner; but comparative advertising usually involves the use of a third party's trademark.
A number of judicial decisions have been issued on the subject, ranging from the seminal 1971 judgment in Rolex v Orient - in which comparative advertising was directly considered an act of unfair competition and an illegal form of advertising - to recent rulings in which judges have rendered less categorical decisions.
While authoritative legal authors have established no unanimous criteria on such advertising, the criterion that appears to prevail admits comparative advertising, provided that:
However, the line that separates what is lawful and what would cause an injury to the rights of the trademark owner is thin and often a matter of interpretation. Consequently, it is clear that until specific legislation has been enacted in this regard, any comparative advertising activity will entail risks that lawyers and advertisers alike will find difficult to evaluate.
Comparative advertising has been permitted in certain cases. For example, in Laboratorios Bagó SA v Bristol Myers Squibb Argentina SA (March 27 2009) Division II of the Federal Court of Appeals in Civil and Commercial Matters ruled - in relation to an advertising campaign in which the prices of a given pharmaceutical product manufactured by different laboratories were specifically compared - that the use of third-party trademarks in such price comparisons would not be prohibited, as long as the information provided was truthful and objective.
The Court of Appeals further stated that:
"as a rule, comparative advertising does not conform to the Trademark Law…but different shades of meaning should be considered since if it is conducted respecting fair business practices and without causing illegitimate damage to third parties, which would be the reason for not allowing its use (as long as it does not imply taking advantage of a third party's trademark without his authorization)."
In Cervecería y Maltería Quilmes v CASA Isenbeck (May 19 2005), Division I of the Federal Court of Appeals in Civil and Commercial Matters held in connection with comparative advertising that "it is not prohibited per se in our legislation, as long as the legitimate rights of the owner of the mentioned trademark are not infringed".
It also held that:
"What the law prohibits is using a third party's trademark as if it belongs to oneself, but it does not prohibit using a third party's trademark as if it belongs to that third party, in order to compare products it protects with one's own products."
(1) Comparative advertising is a method through which an advertiser refers - in either an implied or an explicit manner - to its competitors, their products, services or distinctive signs in order to compare them with its own and highlight the advantages of the advertiser's products or services.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
ILO is a premium online legal update service for major companies and law firms worldwide. In-house corporate counsel and other users of legal services, as well as law firm partners, qualify for a free subscription.