Volume 6, Number 16, Page 2

Protection of Well-Known Trademarks in Argentina

By Bernard Malone of Baker & McKenzie

Argentina’s legislation does not have a definition of well-known trademarks. The Courts however, have expressed that a trademark is considered well-known if it is familiar even to those consumers that do not normally purchase the represented goods or services, or if the mark is generally known within industry circles.

Prior use, sales, advertising and the use and registration of the trademark in other countries are also taken into consideration by the Courts.

Scope of Protection

Although, as stated above, the Argentine Trademark Law No. 22,362 (Trademark Law) of 1981 does not provide specific provisions with respect to well-known trademarks, the courts have created a category of trademarks meriting more protection than ordinary ones. For example, the courts have:

• granted protection to well-known trademarks beyond the scope of the class in which they are registered;
• upheld complaints in other categories by owners of well-known trademarks; and
• maintained that strict criteria should be applied when the similarity of a trademark with a well-known trademark is being considered.

First to File System—Cancellation Action

The Trademark Law, following the system of the preceding law, also adopted the first-to-file system (attribute system) by which priority is granted to the first to file and exclusivity is granted by registration. Specifically, Article 4 of the Trademark Law establishes that ownership of a trademark and the exclusive right to its use is acquired through registration.

The rigid application of this principle when the old law was in force, gave way to speculative trademark registrations and the misappropriation of well-known and not so well-known trademarks. Fortunately, before the Trademark Law came into effect and on the basis of the principals of the Civil Code (such as good faith, unjust enrichment and respect for third party rights) there were an important number of Court decisions condemning trademark piracy.

As an example, in 1971 in the “La vaca que ríe” case (Fromageries Bel S.A. v. Enrique Ivaldi) the Courts adopted the position that copying of a foreign mark was in itself an act contrary to proper practice and third party rights, and therefore expressly prohibited by Article 953 of the Civil Code.

In 1981 when the Trademark Law was enacted, its Article 24(b) established that trademarks registered by persons who knew or should have known that the right to said marks belonged to a third party, are null and void. In other words, the fact that a trademark is well-known is sufficient to show that the registrar of the pirated trademark knew or should have known that a trademark belonged to a third party.

While Article 25 of the Trademark Law provides that cancellation actions are subject to a statute of limitations of ten years, it is expected that the courts will abide by earlier legal precedents which established that, in cases of bad faith, cancellation actions would not be limited in any form.

Paris Convention/GATT—TRIPS

Argentina signed the Paris Convention (Lisbon Act) in 1971. Furthermore, Court rulings condemning the piracy of well-known trademarks as well as the aforementioned Article 24(b) of the Trademark Law demonstrate that Argentina grants broader protection than that granted to well-known trademarks by the Paris Convention. A landmark decision of the Supreme Court however, (Skis Rossignol v. Colucci, of March 31, 1987) has enhanced the importance of the Paris Convention provisions, specifically Article 6 bis, section 1. The Supreme Court emphasized the importance of the concept of “legitimate interest” (the requirement to file an application, opposition and a cancellation action incorporated into Article 4 of the Trademark Law), which implies a legislative approval of the aforementioned Convention provision, and shows a trend in the Courts to give greater consideration to moral rather than formal issues in trademark matters.

In 1995, Argentina also adhered to the Gatt-TRIPs Agreement, thus reinforcing the provisions of the Paris Convention in relation to well-known trademarks. Furthermore, a number of recent Court decisions have already begun applying provisions of the Gatt-TRIPs Agreement.

Conclusion

As a result of Court rulings that clearly condemn trademark piracy and have created a category or marks with a broader scope of protection, the provisions of the Trademark Law (Article 24(b)), the relevant provisions of the Paris Convention and the GATT/TRIPs Agreements, it can be said that Argentina grants a solid protection to well-known trademarks.