1. Why register a trademark?
For both commercial and protection reasons, trademarks should be registered. The risk of not registering a trademark is that others may register an identical or similar mark that could impede the ability to use or register the mark in Argentina. Registration is prima facie evidence of ownership and validity. Registration can generate royalties through licensing.
2. Is registration of a mark mandatory?
Registration is compulsory. However, in some exceptional cases, unregistered marks may be protected by the courts on the basis of civil and/or criminal provisions and/or general principles of law that punish acts committed in bad faith.
3. What is registrable?
Words, drawings, emblems, monograms, engravings, color combinations, combinations of letters and numbers, advertising slogans, and any other distinctive signs, including service marks, are registrable.
4. Can a trademark be registered for retail and like services?
A trademark can be registered for retail and like services in accordance with the Nice Classification system, which applies in Argentina even though the country is not a member of the Nice Agreement.
5. How are domain names protected?
Domain names in Argentina are protected by NIC Argentina, a public service regulated by the Argentine Ministry of Foreign Affairs, International Trade and Culture through its Informatics Program according to international practices. (Further information may be found at the government website www.nic.ar.)
6. Should a trademark be searched before filing?
Applications are officially searched as to prior marks, but this takes several months. If the applicant makes no prefiling search, and the official search is clear, the cost of the prefiling search is saved. However, if the official search is not clear, the prefiling search could have saved the applicant the cost of filing an application. If the mark is to be used in many countries, a prefiling search is recommended, at least in major countries, to avoid unnecessary costs entailed by adopting, developing, and filing a mark that has already been registered by someone else.
7. How do I file?
An applicant may file either via a home trademark attorney or by directly contacting an Argentinean trademark attorney.
8. What information must be provided before filing?
Before filing, an applicant must provide a few specimens of the mark unless the mark can be represented in plain block capital letters, full details of the applicant, and a list of goods/services to be covered. Other prefiling documents include a power of attorney bearing notarial attestation and consular legalization, or apostille if the country of origin is a member of the Hague Convention (October 5, 1961), unless a general power for trademarks has already been provided. This document must be received no later than 60 days after the filing of the application.
9. Is local registration the only option, or are there international alternatives?
Local application is the only option.
10. Is it necessary to file more than one application if a mark is used in more than one class of goods and/or services?
Yes. A separate application must be filed for each class of goods or services.
11. Is it possible to take advantage of a home application or registration?
If an applicant抯 home country is a member of the Paris Convention, and provided its home application has been filed within six months preceding the Argentinean application, the filing date of the home application can be claimed as the filing date in Argentina. Similarly, if an applicant抯 home country is a member of the World Trade Organization, it should be possible to claim the home filing date. Consult an Argentinean trademark attorney.
12. Must a trademark be used after registration, and what happens if a trademark is not used?
A mark must be used within five years of the registration date. If not, the registration will become vulnerable to cancellation for nonuse. However, late use after the five-year term may cure nonuse, provided that in the interim no third party has filed an action for cancellation for nonuse. Likewise, use of the trademark within five years prior to the expiry date is required in order to renew the registration.
13. Is using a variation of the trademark allowable?
If the difference is slight and does not alter the substance of the registration, use of a slightly different trademark would not affect the enforceability of the registration. However, if the difference is significant, a new application may be necessary because it is not possible to amend a registration. An Argentinean trademark attorney should be consulted on this issue.
14. Is there any advantage to using a trademark before filing an application?
No. Ownership of a mark and the exclusive right to use it are obtained only through registration. However, courts may protect unregistered marks in some exceptional cases. (See response to question 2, above.)
15. For an application to be valid, are there any particular requirements that must be met?
No. Anyone having a legitimate interest (inter閟 leg韙imo) may apply. The first applicant is entitled to registration.
16. What information is first published about an application/ registration and when is it published?
The first information published about an application is its serial number, filing date, priority claim, if any (in accordance with the Paris Convention), class, applicant抯 name, goods or services to be covered and registration number of the trademark attorney. This information is published in the Trademarks Bulletin, an official publication, on average between 30 and 50 days after the filing of an application.
17. What kind of examination (if any) will a new application undergo?
A formal examination is conducted before publication and a novelty search is conducted following publication.
18. What response to official objections is required?
The applicant is entitled to reply within a given period, which may be extended. If objections are confirmed, the applicant is entitled to appeal. The goods/services of the application may need to be amended, and consent from the proprietors of cited registrations may be required.
19. How long is the registration process?
The registration process takes approximately from six months to four years, depending on oppositions and/or other difficulties that the application may encounter.
20. What rights does an application confer?
The application can be cited against, or used to oppose, a subsequent conflicting application.
21. What is the legal effect of a registration?
The registrant has an exclusive right to use the registered trademark, oppose subsequent applications and sue for infringement and cancellation of subsequent registrations and applications. The registrant can also apply for precautionary measures inaudita altera parte in accordance with Argentine Trademark Law No. 22362 (which includes attachment, inventory and description of the infringing goods, and seizure of one sample thereof), as well as the provisional measures provided in Article 50 of the TRIPs Agreement.
22. Can an application be opposed or cancelled by third parties?
Yes. Third parties may file opposition to an application within 30 days of publication on the grounds of nondistinctiveness, deceptiveness or conflict with prior rights.
23. Can an application or registration be assigned?
Yes. Both an application and a registration for all or some of the goods/services covered may be assigned.
24. Must an assignment include goodwill?
No. The assignment may be either with or without goodwill.
25. Does an assignment have to be recorded?
Assignments must be recorded to be valid against third parties.
26. Can an application or registration be licensed?
Yes. Consult an Argentinean trademark attorney.
27. Does a license have to be recorded?
Licenses must be recorded to be valid against third parties and for tax reasons.
28. What is the territorial limit of a registration?
The territorial jurisdiction is Argentina.
29. How long does a registration last?
The term of registration is ten years from the date it is granted, and is renewable for ten-year periods.
30. What is required to renew a registration?
Payment of a renewal fee and a declaration of use are required (see response to question 12, above).
31. Is it necessary to indicate a trademark registration on goods or services?
Although marking is not compulsory, it is recommended; 揗arca Registrada,?揗R,?or ?are commonly used.
32. Does the International Classification System apply?
Although Argentina is not a member of the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks, it has adopted the international classification. Most recently, by Disposition No. M-147/02 dated March 13, 2002, the Argentine Trademark Office has decided that applications filed as of April 1, 2002 must adjust to the 8th Edition of the Nice Agreement, which became effective on January 1, 2002.
33. Is your national office accessible online?
Yes. INPI抯 website is www.inpi.gov.ar. |
