Since the Trademark Law reserves the right to use a trademark for the mark's owner, legal scholars in Argentina have long debated whether the use of trademarks in comparative advertising is permitted. With the recent approval of Emergency Decree 274/2019, legislation has, for the first time, addressed comparative advertising in Argentina in a detailed and systematic manner and established when it is allowed.
Emergency Decree 274/2019 has established a comprehensive system for regulating unfair competition. Many practices punished by the new unfair competition rules affect IP rights. Further, the new legislation establishes a series of provisions that are highly valued in the IP field, including the detailed regulation of comparative advertising and provisions referring to names of origin and trade secrets.
Law 25,163/1999 and Law 25,380/2000 govern appellations of origin in Argentina for wines and wine-based spirits as well as agricultural and food products, respectively. The Ministry of Production and Labour recently acknowledged a new appellation of origin for a sweet quince paste produced in San Juan that is part of the local culinary tradition and whose characteristics derive from the manufacturing process and the quality of the quinces produced in the province.
The terms 'corporate name', 'trade name' and 'designation' are frequently used without distinction in commerce and business. However, these expressions must be clearly distinguished. While corporate names distinguish corporations and their use and protection are based on the Companies Law, designations are protected under the Law on Trademarks.
The Argentine Executive Power recently issued Decree 27/2018, which has introduced significant and substantial amendments to the Law on Trademarks, the Law on Patents and the Industrial Model and Design Decree 6,673/63. The most important amendments include a simpler registration process, an expansion of the facts that do not destroy novelty and adjustments to renewal and grace periods.
The government recently issued a decree which introduced substantial changes to the trademark opposition system, empowering the National Institute of Industrial Property to settle disputes concerning oppositions that parties cannot resolve through negotiation. The changes include the establishment of a three-month term to obtain oppositions and a 40-day evidence period.
The Health Authority examines all relevant information to decide whether to authorise a product's introduction to the market, including its trademark or product name. In this regard, the Health Authority considers potential health risks that could occur in the event of confusion and error as regards trademarks or product names and how such confusion could affect physicians, pharmacists and consumers.
Decree 27/2018 was recently issued with the aim of further reducing and simplifying the regulations of different regimes in order to improve commerce and industry. In the IP sphere, the decree introduced important and substantial changes to the trademark opposition system. As a result, the administrative authority will be empowered to settle disputes concerning oppositions that cannot be resolved between the parties by means of negotiation.
A recently issued decree aims to further reduce and simplify the regulations of relevant regimes in order to provide an efficient response to requests for the exercise of commerce and the development of industry. Among other things, the decree simplifies the trademark opposition procedure; implements the administrative resolution of oppositions, nullity and cancellation for non-use actions; and requires proof of use for registered trademarks.
Argentine law contains no specific rules on the risk of confusion regarding pharmaceutical products and legal commentators and case law provide opposing views of whether common or stricter criteria should be applied. In this context, the most recent legislation and judicial decisions recognise that each particular case should be analysed separately in order to determine which criteria should be applied.
The pharmaceutical industry is a regulated activity in the sense that medicaments require government authorisation in order to be commercialised. As a result, registering a trademark with the Trademark Office is insufficient to guarantee its use on a pharmaceutical product, as the name of the medicament must be accepted by the Health Authority at the time of issuance of the required marketing and sales authorisation.
The Internet's introduction, boom and speed of development has resulted in many conflicts and abuses, including the registration of domain names featuring the unauthorised use of a trademark owned by a third party. Argentina has not yet issued a substantive ruling referring to disputes between domain names and trademarks. Until 2009, the interested parties in a conflict had to seek remedy in court due to the non-existence of an alternative dispute resolution system.
IP rights – including rights to a trademark – enable rights holders to exploit certain intangible assets exclusively. In the event of misappropriation or trademark infringement, the trademark owner subject to the infringement will suffer damage due to the fact that a third party is using a similar or identical trademark without its consent. In this regard, the courts must adopt broad criteria when repairing damages, even when it is difficult to prove the effect of the damages concretely.
The new Civil and Commercial Code includes a series of rules referring to intellectual and industrial property matters, including rules referring to image rights, the names of legal entities, the marital community regulation and a series of regulations regarding intellectual and industrial property and franchise, concession and leasing agreements. The code also has a significant impact on the recovery of intangible property rights.
In order to be registered under Decree 6,673/63, industrial models and designs must comply with certain ornamental and novelty requirements and must not be forbidden by law. If an industrial model or design is substantially aesthetic, it is also possible to register it under Law 11,723 on Intellectual Property (Copyright). Double protection is possible, but a rights holder cannot claim protection under both laws simultaneously.
The new Civil and Commercial Code includes a number of IP regulations. Several sections of the code refer to IP matters that govern agreements, including the concession agreement, which is a type of contractual agreement that has gained increasing importance in Argentina. The new code also deals with IP rules set out in the marital community regulation.
A number of regulations governing agreements in the new Civil and Commercial Code refer to IP-related matters. This is especially true for franchise and leasing agreements. The code provides that under a franchise agreement, the franchisor must be the exclusive rights holder of its trademarks, patents, commercial names and copyrights or have the right to confer the right of use and transmission of these IP rights to the franchisee.
Section 53 of the new Civil and Commercial Code addresses image rights in terms similar to Section 31 of the Intellectual Property Law. However, Section 53 is broader and covers visual, auditory and audiovisual registrations. Under Section 53, the rights holder's consent is required not only for the reproduction or publication of an image or voice, but also for the capturing thereof.
The legal regimes for patents and trade secrets aim to stimulate creative and innovative activities – the former by recognising exclusive rights and punishing their violation, and the latter by preventing certain conduct, such as misappropriation or breach of contract, which may affect confidential information. When it comes to protecting new technologies, it can be difficult to decide between the trade secret regime and patent protection.
Comparative advertising was previously rarely used in Argentina due to the uncertainty and risk that it entailed, as the country lacked specific regulations in that regard. Under the new Civil and Commercial Code, comparative advertising is now regulated from a consumer law perspective. The code prohibits comparative advertising that lacks objectivity and leads the consumer into error.