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16 February 2009
In Argentina, ownership of a trademark and the right to its exclusive use are acquired by registration in accordance with Article 4 of the Trademark Law (22,362), which came into effect on December 26 1980 and replaced former Law 3,975. According to the ‘attributive system’ adopted by this law, if there is no trademark registration, there is no right thereto.
However, notwithstanding the adoption of this attributive system, legislation and court decisions have granted special protection to well-known trademarks that were not previously registered in Argentina. Similarly, Section 24(b) of the Trademark Law establishes that a trademark is null if, at the time of application, the applicant knew or should have known that it belonged to a third party.
A trademark consists of any distinctive mark, symbol or device that is affixed by a manufacturer to the goods it produces or is used in connection with the services rendered, with the purpose of identifying such goods or services in the market.
Under Argentine trademark law, the protection term for a registered trademark is 10 years, which begins from the registration date.
Provided that a trademark is used within a five-year period preceding each expiration date, it may be renewed indefinitely for further 10-year periods.
The Supreme Court has ruled that a trademark is the complement of the product to which it is affixed and from which it cannot be removed, since removing it would be contrary to the purpose of the law: to identify a product by its trademark.
In case of infringement the Trademark Law provides for the following punishments:
“31. Any person who perpetrates any of the acts mentioned hereinafter shall be punished with imprisonment from three months to two years and a fine may also be imposed:
a) Any person who infringes or issues fraudulently a registered trademark or name;
b) Any person who uses an infringed or fraudulently issued registered trademark or designation or one belonging to a third party lacking his authorization;
c) Any person who offers for sale or sells a registered trademark or an infringed designation, or a fraudulently imitated registered trademark or designation or a trademark or designation which belongs to a third party lacking his authorization; and
d) Any person who offers for sale or sells or otherwise markets products or services of an infringed or fraudulently imitated registered trademark.”
The Executive Branch will adjust the fixed fine amount on an annual basis according to the registered variation of the general level of the wholesale price index, which is officially published by the National Institute of Statistics and Census. The law also provides for preliminary injunctions.
In relation to the war against trademark piracy in Argentina there are two major fronts: (i) the marketing of counterfeit merchandise in fairs that do not comply with legal formalities; and (ii) the import of counterfeit products through the border.
Informal fairs exist worldwide, but they represent a complex problem, particularly in Latin America, because their operation encourages and favours IP rights infringement.
Such fairs represent a complex problem because it is difficult to bring legal actions - particularly preliminary injunctions - against the parties that are marketing the counterfeit merchandise. This is due to several reasons, including the aggressiveness of the people who occupy such premises with their illegal sale stands.
One solution to this problem may be to analyze the possible judicial application in Argentina of the so-called ‘landlord liability’ doctrine, whereby legal actions can be brought against owners of premises if prior notice has been sent. The landlord liability doctrine was first developed and applied by courts in the United States. It was first applied in Latin America (in Brazil) in 2008.
Import of counterfeit products through the border
By means of Article 46 of Law 25,986/2004, Customs agents are empowered to determine actual or potential IP rights infringements and may block the entry of any goods into the country. The legislation sets out that merchandise may be stopped at Customs while the authorities conduct investigations to determine potential infringements. To complement this law the Customs Authority issued Resolution 2216/07, whereby a new Registry of Intellectual Property Rights was created within Customs. The purpose of the resolution is to protect trademark and copyright owners against the circulation of counterfeits.
The registry discourages trademark fraud as it simplifies the detection and detention of counterfeit products at the Argentine border before any such goods can clear Customs and be distributed throughout the country.
It is necessary to recognize the important roles that Customs and its registry play in the battle being fought against piracy, wherein trademark owners are always at a disadvantage.
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