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09 June 2014
A trademark may consist of one or more words (with or without conceptual meaning), drawings, emblems, monograms, engravings, stampings, seals, images, colour combinations applied to a specific part of the product or its packaging, wrappers, packaging, combinations of letters and/or numbers, special designs of letters and/or numbers, advertising slogans, distinguishing contours and any other distinctive sign.
Trade dress, smell marks and sound marks have all been accepted for registration.
Under Argentine law, a mark can be registered as long as it has "distinctive capacity". This concept has two components:
Certain signs lack originality, including the following.
The name of a product or service cannot be registered as trademark.
In order to determine whether a word or words constitute a necessary designation, not only should the dictionary definition be considered, but also everyday language. In this regard, any term that may be recognised (either among the general public or in specialist fields, given the sign's technical character) as the name or designation of a product or service cannot be registered as a trademark.
The courts have ruled, for instance, that:
"if someone comes up with the idea of registering the expression 'football' or 'tennis' in order to distinguish the services of class 35 (or the one that may apply), this does not entitle the person to acquire a monopoly right of a scope such that it prevents, e.g., two entities from conducting one (or many) football or tennis matches summoning up the audience to watch 'football' or 'tennis' between A and B".(1)
A descriptive term relates to the features, quality, functions, components or characteristics of the goods or services with which it is used.
The law forbids the registration of terms which are generic or descriptive, due to their lack of distinctiveness.
However, the mere fact that a word may suggest a certain relationship with a product or service does not mean in itself that this word cannot be registered.
Words or names that started out as trademarks but, over time, became the common designation for the distinguished product are not eligible for protection.
Often, people ask for a product using what they think it is its name, when in fact the word is a trademark. When a term suggests to the public the product type to which the relevant product belongs, it loses its distinctiveness and can no longer be protected as a trademark. However, eligibility for protection can be lost only if this process takes place before the mark is registered; once it has been registered, it cannot lose its status as such and any vulgarisation of the term will not affect the right to use it as a trademark.
On October 30 2012, Division 2 of the Federal Court of Appeals in Civil and Commercial Matters(2) held that the trademark PHONERENTAL was registrable, as – according to the court's criteria – it was not the necessary and usual designation for mobile phone rental services.
In upholding the first-instance judgment, the court held that PHONERENTAL was neither the necessary and usual designation for the services nor descriptive of the nature, function, qualities or other characteristics of the services, and had not fallen into general use before its application for registration.
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 (email@example.com). The Obligado & Cia website can be accessed at www.obligado.com.
The materials contained on this website are for general information purposes only and are subject to the disclaimer.
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