Trademark Laws and Regulations in Argentina:

Registration is mandatory to establish rights to a trademark; this is a "first to file" jurisdiction.

Requirements:
A single power of attorney (POA). It can be submitted in later date within 40 days after filing date. Please note that absence of a timely POA can result in voiding of the application. It need to be duly notarised and apostilled. If the applicant country is not a member of the Agreement of The Hague (Apostille), The POA need to be legalized via Argentine Consulate.
Also, if priority is claimed, a certified copy of the home application must be translated and submitted within 90 days from filing date.

The order of the application process is as follows:
(1) The trademark application is filed at the Argentina National Institute of Intellectual Property.
(2) examination for compliance with the filing requirements and classification, that is, to ensure that the goods or services fall within the class (es) listed in the application;
(3) publication (30 days counted from the publication date of the application);
(4) examination of absolute and relative grounds as to distinctiveness, deceptiveness, morality, conflict with prior applications and/or registrations;
(5) grant of registration, provided the application passes the examination and no opposition has been filed by any third party.

Timeframe:
The timeframe from filing to registration of the trademark in Argentina goes from 12 to 24 approximately.

Duration:
A registration period is 10 years. Renewable.
The beginning of the period of a registration is calculated from the registration date.
After the 5 year of registration a Declaration of Use need to be filed and pay the necessary fee.

The following legislation regarding plain packaging has been enacted in this jurisdiction:
Act No. 26,687 passed in June, 2011, and subsequent regulations concerning publicity and consumption of tobacco products include, among other provisions, labeling requirements. As a consequence of the act and regulations, each tobacco product packaging must include one out of ten scripted health warnings in a black font on a white background within a black rectangle at the bottom of the front side covering 50% thereof, and the corresponding graphic health warning at the bottom of the other side covering 50% thereof. The lateral side of the packaging must include an 800 number and website corresponding to the Ministry of Health that consumers can resort to in order to help them stop smoking.

B. Time Frame for Obtaining Registration
The approximate time from application to registration (for a regular prosecution, without opposition) is:
Current backlog is in the range of 20 to 24 months.

C. Advantages of Registration
The benefits of registering a trademark include the following:
it is the sole means of obtaining rights in or title to the trademark
(Exceptions for unregistered trademarks are allowed by courts.);
it provides prima facie evidence of ownership and validity;
it provides regional, national, and/or local protection
(Registration of a trademark provides national protection.);
it allows use of "Registered Trademark" or other suitable terms or abbreviations to demonstrate ownership of the trademark;
it allows the registrant access to bring actions in particular courts
(Registration of a trademark allows access to bring actions in the Federal Courts in Civil and Commercial Matters and the Federal Courts in Criminal Matters.);
it helps to deter others from unlawfully using the trademark;
it provides a defense to infringement
(provided the validity of the registration is not successfully challenged by the plaintiff);
enforcement of an unregistered trademark is more difficult and more costly than enforcement of a registered trademark;
it confers the ability to recover maximum monetary damages for infringement;
it encourages licensees and provides the opportunity to generate royalties through licensing.
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.

II. Pre-Filing
A. Registrable Trademarks
The following signs that can be reproduced graphically and are capable of distinguishing the goods or services of one person or entity from another are registrable as a trademark:

words;
names;
devices;
certain three-dimensional shapes;
colors;
slogans;
sounds;
smells (olfactory trademarks);
trade dress/get-up

(The equivalent of trade dress is often registered as a graphic mark including a label in a container shape including a claim to colors and a word mark, or only to shape and color of the relevant label. Argentine Trademark Law does not specifically require graphical representation. However, it does require publication for opposition purposes in the Trademark Gazette. Such requirements will be fulfilled with a suitable description of the non-traditional mark eventually with added access to supporting specimens for sound, odors, etc.);

motion;
touch.
There are no special requirements for the registration of three-dimensional shapes.

The special requirements for the registration of colors are:
single colors cannot be registered.

The special requirements for the registration of sounds are:
must be expressed on a staff, and a magnetic sound record must be submitted for examination on distinctiveness and availability of the sign for registration.

The special requirements for the registration of smells are:
must be described as precisely as possible and the product to which the smell will be applied must be indicated.

There are no special requirements for the registration of trade dress.
The special requirements for the registration of motion are:
The label showing the sequence of motion must be submitted.
There are no special requirements for the registration of touch.
Marks registered in black and white or grayscale are construed narrowly to protect the mark as registered and not in other color combinations.
If an applicant wants to get protection for the mark in specific colors, the applicant must indicate this in the application, submit colored samples, and describe the colors in writing.

In addition to regular trademark registrations, the following types of trademarks are registrable:

certification marks
(can be registered as regular marks);
well-known marks
(can be registered as regular marks);
service marks.

Retail services are registrable provided that the nature of the retail services is clearly identified.

The following are not registrable as trademarks:
marks contrary to moral standards or public order;
generic terms;
names, flags, or symbols of states, nations, regions, or international organizations;
non-distinctive trademarks, absent a showing of acquired distinctiveness (secondary meaning);
marks that function principally as surnames
if they belong to a well-known person or someone known within their field of business for that area of business.

Geographical indications (GIs) are protected in this jurisdiction.

GIs are protected by way of:
special laws for the protection of geographical indications or appellations of origin

(Decree 274/2019 includes administrative actions and penalties against misuse of geographical indications and appellations of origin.);
specific laws or decrees that recognize individual geographical indications;
certain court decisions.

The following products or categories are subject to GI protection in this jurisdiction:
agricultural products; wines.

B. Searching
While conducting a private pre-filing search is not mandatory, it is recommended in that it can:
save the applicant the time, effort, and cost entailed in developing, adopting, and applying to register a trademark in which someone else has prior rights.

The national office is accessible online at the following URL:
https://www.argentina.gob.ar/inpi

The official register can be searched online at the following URL:
https://portaltramites.inpi.gob.ar/marcasconsultas/busqueda

C. Use
An applicant does not benefit from pre-filing use of a trademark except to overcome a TMO objection based on low distinctiveness.

When a mark is not registered, use of that mark may provide the following benefits:

Courts may protect unregistered trademarks in some exceptional cases.

Special protection against infringement may be available for a famous and/or well-known mark that is not registered.

Protection against infringement may be available for trademarks with substantial and long-standing use that are not registered.

Famous and/or well-known marks are protected via the following mechanism(s):

a determination by the court resulting from an action for infringement;

a determination by the court (other than one resulting from an action for infringement).

 This is often an opposition proceeding.

D. International Treaties

This jurisdiction is a member of the following international treaties relating to intellectual property:

Paris Convention;

Nairobi Treaty;

Nice Agreement.

III. Filing

A. Requirements

If the applicant is not domiciled in this jurisdiction, a local address for service must be provided.

Joint applicants are permitted in this jurisdiction.

Neither actual use nor intent to use is required for application.

The following information is required to COMPLETE an application:

name and address of applicant;

state or country of incorporation;

description of trademark;

representation of trademark (a depiction of the mark an applicant seeks to register);

list of goods/services;

power of attorney

(Although a POA does not have to immediately be submitted, it is required for the local representative to have a validly issued POA within 40 working days of filing. Absence of a timely POA can result in voiding of the application.);

official filing fee

(required within 24 hours);

 local address for service.

While ALL of the items noted in the list immediately above are required to COMPLETE an application, ONLY THE FOLLOWING ITEMS from that list are required in order to SECURE A FILING DATE:

name and address of applicant;

state or country of incorporation;

description of trademark;

representation of trademark (a depiction of the mark an applicant seeks to register);

list of goods/services;

power of attorney

(Although a POA does not have to immediately be submitted, it is required for the local representative to have a validly issued POA within 40 working days of filing. Absence of a timely POA can result in voiding of the application. Also, if priority is claimed, a certified copy of the home application must be translated and submitted within 90 days of local filing.);

official filing fee;

 local address for service.

The list of goods and services in this jurisdiction may specify:

the relevant class heading.

In 2019, the TMO implemented TM Class expedited publication. When the applicant uses the options provided through the TM Class tool, the local application is published without formal revision within two to three weeks.

The following number of copies of the trademark must be submitted:

none other than the application.

In this jurisdiction, the following types of registration are available:

national.

This jurisdiction is not a party to either the Madrid Agreement or the Madrid Protocol and may not be designated in international applications.

This country is not a member of the European Union; a European Union Trade Mark registration is not effective in this jurisdiction.

No (other) multinational regional registrations are available in this jurisdiction.

Applications can be filed online at the following URL:

 https://portaltramites.inpi.gob.ar/

The official file can be accessed online at the following URL:

 https://portaltramites.inpi.gob.ar/marcasconsultas/busqueda

Applications are officially searched as to prior trademarks.

It takes about 20 months from the application date.

B. Priority

If an applicant's home country is a signatory to the Paris Convention, the filing date of its home application can be claimed as the filing date in this jurisdiction, provided that its home application was filed within the fixed period of six months preceding the application in this jurisdiction.

C. Classification

This jurisdiction uses the Nice Classification System.

If a trademark is or will be used in more than one class of goods and/or services, it is necessary to file a separate application for each class of goods and/or services.

D. Representation

An application to register a trademark may be filed directly in this jurisdiction by:

the applicant, but only if a citizen of or domiciled in the jurisdiction;

a trademark representative/attorney/agent, but only if a citizen of or domiciled in the jurisdiction.

IV. Application

A. Publication

The filing particulars of an application are made available to the public.

The filing particulars are made available to the public:

through publication and online.

The following application details are made available to the public:

mark;

name of applicant;

state or country of incorporation of applicant;

citizenship of applicant;

application number;

application date;

goods/services;

priority claim information;

representation of trademark;

 if applicable, trademark agent's registration number.

B. Examination

Applications are examined in respect of:

formalities: i.e., for compliance with the filing requirements;

classification: i.e., to ensure that the goods or services fall within the class(es) listed in the application;

clarity: i.e., that descriptions are clear and understandable;

descriptiveness: i.e., to check whether a trademark functions solely to provide information about the goods and services affiliated with the trademark;

distinctiveness: i.e., to ensure that trademarks are capable of being represented graphically and of distinguishing the goods or services of one individual or organization from those of other individuals or organizations;

deceptiveness: i.e., to check whether a trademark is of such a nature as to deceive the public (for instance, as to the nature, quality, or geographic origin of the goods or services);

conflict with prior registration, prior-filed application, or earlier unregistered rights resulting from an official search.

 Initial examination is only on formal grounds, including classification and clarity. A second examination (20 months from filing) is conducted on substantive grounds, both absolute and relative. This includes assessing distinctiveness, deceptiveness, morality, conflicts with prior marks, etc.

If the local trademark authority issues a preliminary refusal to register a mark based on an earlier registration owned by another:

The existence of a valid coexistence agreement between the applicant and the cited registrant may be accepted as evidence permitting registration of the application; its acceptance is at the discretion of the trademark authority.

This jurisdiction does not have disclaimer practice (i.e., a practice whereby the applicant must disclaim any exclusive right to an element of a trademark that is not distinctive).

The order of the application process is as follows:

publication, examination, registration.

C. Prosecution

Accelerated examination may not be requested.

 However, in 2019, the TMO implemented TM Class expedited publication. When the applicant uses the options provided through the TM Class tool, the local application is published without formal revision within two to three weeks.

The following rights are established by a pending application:

the filing date of the application establishes a home filing date for purposes of priority;

the pending application can be cited in official examination against a subsequent (later-filed) conflicting application;

the pending application can be used in a third-party opposition proceeding against a subsequent (later-filed) conflicting application.

D. Opposition

Opposition is available.

Opposition is conducted pre-grant.

The following can be grounds for opposition:

proprietary rights, such as an earlier conflicting registration;

the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services or other characteristics of goods or services;

the mark is not distinctive;

the mark is misleading, deceptive, or disparaging;

the mark is functional;

breach of copyright;

rights under Article 6bis of the Paris Convention (notorious or well-known mark);

rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);

rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);

rights under Article 8 of the Paris Convention (trade names);

registered design rights;

rights in a personal name;

the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;

the mark is against public policy or principles of morality;

the mark consists of a denomination of origin (Denomination of origin is understood as the name of a country, region, locality, or geographical area that identifies a good as originating therein, where a given quality and characteristics of the good are exclusively attributable to its geographical origin.);

slogans lacking originality.

An application is published for opposition purposes after formal examination of the application.

Formal examination does not include relative grounds that are reviewed after publication.

The opposition period begins on the following date:

from the date of publication.

The opposition period ends on the following date:

30 days from publication.

The following parties may initiate an opposition:

any interested party;

the owner of an earlier right;

a licensee;

 anyone with a legitimate interest, which is broadly construed as any interest that is not unlawful.

Oppositions can be filed online.

E. Proof of Use

Proof of use is not required prior to the issuance of a registration or the issuance of a notice of allowance/acceptance.

V. Assignment, Licensing, and Other Changes to Trademark Records

A. Assignment

An application can be assigned.

A registration can be assigned.

An assignment of an application must be for the entire territory covered by the application.

An assignment of a registration must be for the entire territory covered by the registration.

An assignment of an application can be for some or all of the goods or services listed in the application.

An assignment of a registration can be for some or all of the goods or services listed in the registration.

Goodwill need not be included in an assignment of an application.

Goodwill need not be included in an assignment of a registration.

An assignment document for an application requires:

name of assignor;

address of assignor;

name of assignee;

address of assignee;

details of the trademark being assigned;

goods and services being assigned;

effective date of the assignment;

signature by assignor;

signature by assignee;

actual consideration

(An assignment document may assign without consideration (for free) or for an unknown consideration in a global transaction. In Argentina a valid contract requires good cause, but that is not the same as requiring "consideration." An intracompany free-of-charge assignment is valid. Good cause would be, for instance, restructuring of the company.).

An assignment document for a registration requires:

name of assignor;

address of assignor;

name of assignee;

address of assignee;

details of the trademark being assigned;

goods and services being assigned;

effective date of the assignment;

signature by assignor;

signature by assignee;

actual consideration

(An assignment document may assign without consideration (for free) or for an unknown consideration in a global transaction. In Argentina a valid contract requires good cause, but that is not the same as requiring "consideration." An intracompany free-of-charge assignment is valid. Good cause would be, for instance, restructuring of the company.).

Legal verification of a written assignment document of an application is required by:

notarization;

legalization

(Apostille where available; otherwise, consular legalization).

Legal verification of a written assignment document of a registration is required by:

notarization;

legalization

(Apostille where available; otherwise, consular legalization).

An assignment of an application must be recorded to be effective.

An assignment of a registration must be recorded to be effective.

B. Licensing

Use of a mark that is the subject of an application can be licensed.

Use of a registered mark can be licensed.

In this jurisdiction, registered trademark users (as opposed to licensees) cannot be recorded.

A license of an application can be made for a portion of the territory covered by the application.

A license of a registration can be made for a portion of the territory covered by the registration.

A license of an application can be for some or all of the goods or services listed in the application.

A license of a registration can be for some or all of the goods or services listed in the registration.

A license of an application can be exclusive (only one licensee, with the owner excluded).

A license of an application can be sole (only one licensee and the owner).

A license of an application can be non-exclusive (multiple licensees and the owner).

A license of a registration can be exclusive (only one licensee, with the owner excluded).

A license of a registration can be sole (only one licensee and the owner).

A license of a registration can be non-exclusive (multiple licensees and the owner).

Use by a related company of a mark that is the subject of an application need not be licensed.

 However, good practice would dictate the need of a written authorization of use (unrecorded) in the event that such use may, at some point, need to be traced back to the owner.

Use by a related company of a registered mark need not be licensed.

 However, good practice would dictate the need of a written authorization of use (unrecorded) in the event that such use may, at some point, need to be traced back to the owner.

A license of an application can be made with a time limitation.

A license of a registration can be made with or without a time limitation.

A license document for an application requires:

name of licensor;

address of licensor;

name of licensee;

address of licensee;

details of the trademark to be licensed;

goods and services being licensed;

commencement date of the license;

term of the license;

if the license has no limitation of time, a statement so indicating;

territory of the license;

quality control provisions;

signature by licensor;

signature by licensee;

express permission to sublicense, if appropriate.

A license document for a registration requires:

name of licensor;

address of licensor;

name of licensee;

address of licensee;

details of the trademark to be licensed;

goods and services being licensed;

commencement date of the license;

term of the license;

if the license has no limitation of time, a statement so indicating;

territory of the license;

quality control provisions;

simple signature by licensor (see below for execution requirements);

simple signature by licensee (see below for execution requirements).

Legal verification of a written agreement to license an application is required by:

notarization;

legalization.

A license of an application need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.

 Furthermore, even though an agreement that is not recorded is still valid, certain tax benefits will not apply.

A license of a registration need not be recorded, but recordation could help in enforcement, to demonstrate use of the mark.

Furthermore, even though an agreement that is not recorded is still valid, certain tax benefits will not apply.

The license for a renewed registration need not be re-recorded.

Legal verification of a written agreement to license a registration is required by:

notarization;

legalization.

C. Other Changes to Trademark Records

The requirements for the recordal of name changes, mergers, and other important corporate updates on trademark records are as follows:

power of attorney, legalized by the respective consulate/apostille;

deed of assignment, legalized by the respective consulate/apostille;

certificate of proof of change of name, legalized by the respective consulate/apostille;

certificate of merger, legalized by the respective consulate/apostille;

 (1) Change of Name / Merger: A certified copy of the certificate, issued by the Register of Commerce, that attests as to the change of name or merger, duly legalized by Apostille/Argentine Consulate.
(2) Assignment: An assignment document must include the following information:
(a) Full name and address of assignor and assignee;
(b) Trademark/s involved and number/s thereof;
(c) Consideration paid for the assignment or an indication that the assignment has been made free of charge. When identifying the compensation for the assignment, generic formulas are not accepted. If the transaction involves several countries, a declaration that the assignment was made for "a good and valuable consideration and involved a worldwide transaction, the sum of which, as applied to Argentina, cannot be determined" may be stated. The assignment document must be executed by Assignor and Assignee. A notary must attest to the identity and legal capacity of the signatory for the assignor (i.e., that she is sufficiently empowered to execute the document on behalf of the company she represents). The notary's signature must be legalized by Apostille/Argentine Consulate. The assignee's signature does not require notarization.

The requirements regarding the recordal of updated addresses on trademark records are as follows:

No need to record changes of address. The address for services is that of the representative law firm.

The requirements for recording liens against trademark records, such as security interests, are as follows:

 To make a pledge effective, it is necessary to have it recorded before the RCPN (Registry of Pledges) through a special template form. The form must be filled out in Spanish and signed by a duly authorized officer of each party, notarized, and legalized with the Hague Convention Apostille. It will then be notified to INPI for recordal against each and every trademark application or registration included in the Security Agreement. The registration is effective vis-à-vis third parties as from the filing before the RCPN. A Power of Attorney to act on behalf of the client before the RCPN and INPI is required.
The full security agreement may be filed to the extent that its stipulations are to be enforced under Argentine law. It is generally not convenient to file the full Security Agreement. For instance, it may not be advisable to file the full Security Agreement if: (i) some of the clauses could be considered null and void according to the Argentine Law, or (ii) it is only intended to secure a part of the credit with the industrial property registered in Argentina, or (iii) the Security Agreement includes confidential information that the client does not want to be made public.
In case the underlying debt is not paid, the pledge will lapse five years from the time of perfection. However, pledge renewal is possible. (Consult a local trademark counsel.)
There is a registration tax at the rate of 2/1000 of the amount appearing in the form. Additionally, the City of Buenos Aires stamp tax will apply. The stamp tax rate is 1% calculated on the economic value of the Pledge Agreement.

VI. Registration

A. Requirements

A fee is not required for issuance of the registration.

The following documentation is required for issuance of the registration:

none.

B. Rights

The following rights are established by registration:

the exclusive right to use the registered trademark;

the right to oppose subsequent conflicting applications;

the right to bring a cancellation action against a subsequent conflicting registration;

the right to sue for infringement against confusingly similar third-party trademark use;

the right to license third parties to use the trademark;

the right to apply for seizure by customs authorities of counterfeit goods being imported into this jurisdiction;

the right to obtain damages for infringement.

The Roman alphabet is used to represent the official language(s) of this jurisdiction.

A trademark becomes incontestable, that is, the validity of the registration cannot be challenged, after the following time period:

counting from the date of registration of the mark:

 There is a 10-year statute of limitation to file a cancellation action that challenges the validity of a trademark registration. Some court decisions have held there is no time limit for requesting the cancellation of a registration in the case of well-known marks.

The territorial limit of registration is:

Argentina.

C. Term

The initial term of a registration is:

10 years.

The beginning of the term of a registration is calculated from:

the registration date.

D. Marking Requirements

Marking is not compulsory for registered trademarks, but is advisable because:

 it alerts third parties to the registration who later cannot claim they were innocent infringers.

Any marking should be in the form(s) mentioned below. Please consult a local trademark attorney in case of doubt.

®;

 MR.

The use of ® is not legally recognized, but it is recognized in practice.

The legal consequences of false or misleading marking are:

liable for damages if proven and subject to cease of use of the misleading material.

VII. Post-Registration

A. Use Requirements

Attack on the ground of non-use is available.

To avoid being attacked on the ground of non-use, a trademark must be used within the following period of time:

 five years from the registration date.

To satisfy the use requirement, the amount of use:

must be on a commercial scale.

A merely token use will not suffice to avoid cancellation for lack of use.

Use of the trademark must occur in:

this jurisdiction.

The consequences of a trademark's not being used are as follows:

could be cancelled by a third party with legitimate interest.

The following periodic statements of use or other mandatory filings by the trademark owner setting forth use of the trademark are required:

 A sworn statement of use must be filed with each application for renewal. The statement of use on a single product or on a service or as a trade name will be sufficient to obtain renewal of the registration. A mid-term declaration of use should be filed between years five and six of the life of the registration and each renewal thereafter.

Statements or filings regarding use must be submitted on the following schedule:

Between years five and six, counted from the registration date and renewal date, and upon each renewal.

An action for non-use of a trademark can be brought by:

the trademark office, "ex officio"

(Though the new law allows this, in practice, the TMO is not doing so.);

any interested third party.

Non-use can be excused under the following circumstances:

import restrictions;

other government policies;

 force majeure.          
All of the above are exceptional excuses for non-use, to be assessed by courts on a case-by-case basis. Such cases may include import restrictions and other government policies if it can be shown such restrictions clearly stopped the titleholder from using the mark within the five years preceding renewal or preceding a cancellation action by a third party.

Resumption of use after non-use for the prescribed period (see above) may cure non-use provided that, in the interim, no third party has:

filed an action for cancellation of the trademark on the ground of non-use.

Use of a registered trademark in a modified form would not affect the enforceability of a registration and is allowed if the difference is slight and provided that the modification does not materially alter the distinctive character of the trademark. Consult a local trademark attorney.

Amendment of a registration to conform to a modified form of the trademark is not possible. Depending on the circumstances, a new application to register the modified trademark might be necessary. Consult a local trademark attorney.

B. Cancellation

Cancellation is available.

The following can be grounds for cancellation:

proprietary rights, such as an earlier conflicting registration;

the mark is descriptive, i.e., it consists of a sign or indication that may serve in trade to designate the kind, quality, quantity, intended purpose, or value of goods or of rendering of services, or other characteristics of goods or services

(The statute of limitations for this ground is 10 years.);

the mark is not distinctive

(The statute of limitations for this ground is ten years.);

the mark is misleading, deceptive, or disparaging

(The statute of limitations for this ground is ten years.);

the mark is functional

(The statute of limitations for this ground is 10 years.);

breach of copyright;

rights under Article 6bis of the Paris Convention (notorious or well-known mark)

(Normally, the statutory bar does not apply in cases of bad faith.);

rights under Article 6ter of the Paris Convention (protection of armorial bearings, flags, and other State emblems);

rights under Article 6septies of the Paris Convention (registration in the name of the agent or other representative of the proprietor of the mark);

rights under Article 8 of the Paris Convention (trade names);

registered design rights;

rights in a personal name;

the mark is generic, i.e., the mark consists exclusively of signs or indications that have become customary in the current language or in the bona fide and established practices of the trade;

the mark is against public policy or principles of morality;

the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention

(The mark consists of a denomination of origin (the name of a country, region, locality, or geographical area that identifies a good as originating therein, where a given quality and characteristics of the good are exclusively attributable to its geographical origin.); the application for or registration of the mark was made in bad faith.);

the application for or registration of the mark was made in bad faith.

There is a deadline for bringing a cancellation action.

See Section VII.A. Use Requirements. The general statute bar is 10 years. The deadline does not apply to the ground of non-use nor does it apply to bad faith registrations or applications.

The deadline for bringing a cancellation action is:

10 years from registration date.

The following parties may bring a cancellation action:

any interested party;

the owner of an earlier right.

Cancellation actions can be filed online at the following URL:

Non-use and other cancellations can be filed online with the TMO at        https://www.argentina.gob.ar/inpi. However, cancellations based on bad faith and the Paris   Convention should be filed before the federal courts; they cannot be filed online.

C. Renewal

The following documentation is required for renewal:

power of attorney;

declaration of use.

Acceptable proof of use/declaration of use documents are:

declaration from proprietor

(Please see Section VII.A. Use Requirements.);

details of goods/services for which the trademark has been used.

The first renewal date of a registration is:

10 years from the registration grant date.

Subsequent renewals last for the following period of time:

10 years from the renewal date of the registration.

The renewal pre-payment period is:

no more than the following number of months before the renewal date:

 six.

There is a grace period for renewing registrations once the renewal date has expired.

The grace period after the renewal date has expired is:

6 months.

The penalty for late renewal is:

the registration lapses.

Renewal can be effected online at the following URL:

 https://portaltramites.inpi.gob.ar/Home/index. One must be a registered user with a local address and a local fiscal number in order to access the site.

At the completion of renewal, a new registration number is issued.

VIII. Customs Recordation

A. Customs Recordation

Trademarks that are registered in this jurisdiction can be recorded with the customs authority, the name of which is:

 Dirección General de Aduanas (DGA), part of the Administración Federal de Ingresos Publicos (AFIP) in charge of the customs alert system (sistema de alertas de la Aduana).

Recordation with the customs authority cannot be accomplished online. The following process must be followed:

 An official form (OM 2270) must be completed that includes the following:

Name of the person requesting the recordation, taxpayer number, email address, address, phone number, importer and exporter registration number;

Name of the owner of the trademark registration, taxpayer number in its country of origin, address, email address, country, phone number;

Name of the person in charge of pursuing the recordation, taxpayer number, ID number, address, email address, phone number;

Name of the licensee, taxpayer number, address, phone number, email address, trademark/s object of the license agreement, type of products, license agreement expiry date;

Original documentation supporting the above information, including power of attorney (notarized and legalized), certificate of trademark registration, among other documents. Photocopy of all the documentation must be submitted that will remain with the customs authority.

The recordation is valid for a two-year term and must be renewed within 30 days prior to the expiration of the term. The OM 2270 form can be found at https://serviciosweb.afip.gob.ar/genericos/formularios/pdf/OM2270.pdf

IX. Domain Names

A. Domain Names

A domain name may be protected as a trademark only if the domain name is not merely a Web address but is used or intended to be used in connection with goods or services.

The following approved registrars can register a domain name in this jurisdiction:

NIC Argentina, administered by the Argentine Ministry of Foreign Affairs, International Trade and Worship. Anyone can register at this public registrar. https://nic.ar/

Availability of domain names in this jurisdiction can be searched through the following website(s):

https://nic.ar/buscar-dominio

The Country Code Top-Level Domain (ccTLD) for this jurisdiction is:

.ar

To obtain a domain name under the ccTLD in this jurisdiction, there are no requirements of locus with this jurisdiction, such as a local address or local business activity.

Domain name registrations can be assigned.

Domain name registrations can be licensed.

A domain name registration may be contested in this jurisdiction through the following mechanisms:

 A domain name registration may be contested before NIC Argentina and in court.

If a registration lapses as a result of failure to renew, it can be revived or restored in the following way:

 A domain name registration is valid for one year. If an application to renew the domain name is not filed within the month previous to the expiry of the registration, a process to remove it begins, and it lasts 33 days. The registration can be renewed provided it is requested within the said 33-day period.

The application to register a domain name as a trademark will be examined for conflicts with prior trademarks.

An earlier-filed domain name registration can create rights effective against a later-filed trademark registration application filed by another only if the domain name is being used as a trademark in addition to being used as an address.

In general, the courts apply the same principles to domain name disputes as are applied to trademark disputes.
 

ARGENTINA TRADEMARK OPPOSITION PROCESS 

I. Availability

A. Pre- or Post-Grant

Opposition is available.

Opposition is conducted pre-grant.

Opposition is available only for all of the goods/services covered by a trademark application or registration. Opposition to part of the goods/services covered by a trademark application or registration is not available in that even if only some goods/services are opposed, the entire application will be rejected.

B. International Registrations

This jurisdiction has no current plans to become a member of the Madrid Agreement or the Madrid Protocol, although an agreement between Mercosur and the European Union is being negotiated. As a condition to its signature the countries must commit to adopt the Madrid Protocol within a certain time. It is expected that the agreement will be closed before the end of 2020, but it will be a few years before the Madrid Protocol is adopted by Argentina.

C. Collective Marks and Certification Marks

Collective marks are registrable.

Opposition to an application for a collective mark is available.

Opposition to a registration for a collective mark is not available. Only a cancellation through the courts is available. Recently, however, it has been established that some cancellation actions may be filed at the National Institute of Industrial Property (INPI), though the procedure has not yet been implemented.

Certification marks are not registrable, though any sign could be registered as a trademark and then used as a certification mark.

II. Effect on Registration Rights

A. Effect on Registration Rights

An opposition (even if unsuccessful or later withdrawn) will delay the grant of full registration rights to the applicant. Of course, the length of the delay will depend on when the opposition is withdrawn. If it is withdrawn within a few months after filing, there will be no delay in granting.

III. Grounds

A. Absolute, Relative and Other Grounds

The following grounds are admissible for opposition:

relative grounds (based on conflicting prior application(s)/registration(s) or based on conflicting prior rights in unregistered marks);

absolute grounds (based on grounds other than proprietary rights, e.g., not a proper trademark, non-distinctiveness, descriptiveness or deceptiveness);

bad faith issues (e.g., wrongful claim to ownership or lack of intention to use);

conflicting copyright or design rights;

rights under Article 6bis of the Paris Convention or the equivalent thereto (notorious or well-known marks);

rights under Article 6septies of the Paris Convention or the equivalent thereto (registration in the name of an agent or other representative of the proprietor of the mark);

rights in a locally registered company name;

rights in a foreign registered company name;

rights under Article 8 of the Paris Convention or the equivalent thereto (trade names);

rights under Article 6ter of the Paris Convention or the equivalent thereto (prohibitions concerning state emblems, official hallmarks, and emblems of intergovernmental organizations);

offenses against public policy or principles of morality;

any legitimate interest.

B. First to Use or First to File

In an opposition involving conflicting trademark applications or registrations, an earlier use date prevails over a later filing date (i.e., this is a first-to-use jurisdiction).

Circumstances under which an earlier use date is considered sufficient to prevail over a later filing date are: There is no established parameter, but it must be sufficient use to have generated clients/customers (although the number of clients/customers has not been defined).

IV. Forum

A. Forum

The opposition authority is part of the Trademarks Registry/Office. The Trademark Office will decide the admission or not of an opposition after presentations of the parties and production of instrumental and documentary evidence. The procedure consists of the filing of the opposition and the filing of another writ by the opponent ratifying the opposition, with all arguments deemed necessary and offering of evidence that can be only documentary. If there is no ratification, the opposition will be considered a mere belated opposition. Then the applicant will have the chance to answer and also offer evidence. After evidence is filed, the parties will have the chance to file a writ of allegation, and then the Trademark Office will decide. This decision can be appealed at the Federal Chamber of Appeals.

V. Costs and Fees

A. To Initiate

The government/official fees for filing an opposition based on a single prior registration are: the equivalent of approximately USD 35.

The approximate range of attorney fees for filing an opposition based on a single prior registration is: between USD 500 and USD 600, plus 21% VAT.

A listing of government/official fees for oppositions can be found online at: http://www.inpi.gov.ar/templates/marcas_aranceles.asp .

B. Monetary Bonds or Surety from Foreign Opponent

There are no provisions requiring monetary bonds or other surety from a foreign opponent.

VI. Burden of Proof

A. Burden of Proof

The burden of proof is neutral; i.e., both parties must prove any grounds, facts, allegations and defenses on which they rely in the opposition. Please note that he who alleges must prove, with the exception of "use of the mark" cases in which it has been established that the owner of the mark is best suited to prove use. Now that cancellation due to non-use is possible at the INPI, it is expected that this criterion will be maintained.

VII. Substantive Examination

A. Substantive Examination

The trademark registration process includes an official, substantive examination.

This system includes an official, substantive examination of an application on:

both absolute and relative grounds.

The official, substantive examination of an application is conducted after publication for opposition.

Examination of an application on relative grounds includes an official search for conflicting prior applications and registrations, and the examiner has the right of objection and refusal based on cited marks.

Any official, substantive examination report is open to public inspection before the end of the official opposition term.

Opposition is not considered part of the official, substantive examination and is decided in a separate proceeding, but prosecuted before the INPI.

An official, substantive examination will not be conducted after an opposition proceeding has been concluded or after an opposition has been withdrawn. The substantive examination will be concluded before the applicant is officially notified of the opposition. The applicant may learn of the opposition in advance of the conclusion of the substantive examination.

VIII. Standing and Other Opponent Issues

A. Valid Opponent/"Person" and/or "Interested Person" Defined

Standing to oppose extends to:

any interested person. Legal interest is required. For the definition of "interested person," see below.

For purposes of standing, "person" is defined as:

both natural and juridical persons.

For purposes of standing, "interested person" is defined as:

someone who believes he will be damaged by the registration;

someone who owns an earlier pending application to register a conflicting trademark;

someone who owns an earlier conflicting trademark registration;

someone who owns earlier rights in a copyright or design that conflicts with the mark that is the subject of the trademark application;

someone who owns rights in a conflicting trademark that were acquired through use;

someone who is a licensee of any conflicting trademark or other intellectual property right;

someone who owns a company name that conflicts with the mark that is the subject of the trademark application;

someone who is of the opinion that the mark is not registrable (Legitimate interest is broadly interpreted.).

B. On Basis of Grounds

Where opposition is based on relative grounds (i.e., a prior registered or unregistered right), then:

only the owner of the prior right can use that right as a ground of opposition.

Relevant prior rights need not be locally established rights (e.g., local national registration rights, applicable regional rights or relevant International Registration extensions, or local rights in unregistered marks).

If prior rights are not established locally, prior rights established in other jurisdictions may be sufficient for purposes of establishing standing under the following circumstances: They establish that the opponent has a legitimate interest.

C. Assignees and Licensees

An unregistered assignee of a relevant prior right may be a valid opponent.

A registered licensee of a relevant prior right may not be a valid opponent.

An unregistered licensee of a relevant prior right may not be a valid opponent. It must be noted that the concept of a registered licensee does not exist in Argentina.

D. Concealing Identity of Opponent

An opposition filed in the name of the legal representative for purposes of concealing the identity of the principal is not considered validly filed even if the opponent meets all the other criteria. It must be noted that the opponent is the opponent; it is not possible to conceal its identity.

E. Joint Opponents

Two or more opponents may jointly file a single opposition.

A parent company and its trading subsidiary may be indicated together as opponents in a single joint opposition. Both must have a legitimate interest. Usually only the owner of the right opposes, despite the fact that the local branch is the user of the mark.

Two otherwise-unrelated companies may file a single joint opposition. Both must have a legitimate interest. It is possible that they file separate oppositions.

F. Foreign Opponent

Oppositions cannot be filed from abroad; they must be filed by a local agent/attorney.

G. Opponent's Prior Rights and Use

If an opponent relies on a prior registration, the applicant or the opposition authority:

can require proof of use of the earlier-registered mark only when the following amount of time has passed since its application or registration date: five years from the grant of the cited registration. Such proof is required only if the opposing mark is challenged for non-use; if use is not shown, then the mark will be considered lapsed. It must be noted that this is applied only if the opposition is taken to court by the applicant. Nothing must be proved at the administrative stage. The applicant can counterclaim the cancellation of the opposing mark because of non-use. The authorities (INPI) will not require use.

If the opponent does not produce satisfactory proof of use of its prior mark for relevant goods/services, the result would be that:

The opponent does not have to prove use of its mark to succeed in its opposition, unless, of course, its mark is challenged for non-use. It is usual, though, that the opponent that has used its mark proves such use in order to strengthen its position. It must be noted that this is applied only if the opposition is taken to court by the applicant. Nothing must be proved at the administrative stage.

Additionally, if the opponent does not produce satisfactory proof of use of its prior mark:

the registration of the prior mark is not affected by the opposition proceeding, unless a non-use cancellation action was brought in the same judicial action or in a separate proceeding.

IX. Term and Extension

A. Opposition Term: National Applications/Registrations

The system provides a fixed initial term within which an opposition may be filed (30 days after publication).

For national applications, the initial opposition term begins:

on the date that the details of the application are published for opposition in the local official IP bulletin, journal or gazette. This publication is called: Trademark Bulletin, available online at https://portaltramites.inpi.gob.ar/https://portaltramites.inpi.gob.ar/Boletines?Tipo_Item=3.

For national applications, the initial opposition term expires the following number of days or months after the date on which the opposition term begins (as mentioned above): 30 days from publication in the Trademark Bulletin.

C. Deadline Not on Normal Business Day

An opposition deadline that does not fall on a normal business day or that falls on a local public holiday or other officially excluded days may be met by action on the next business day. The deadline must be met within the first two working hours of the Trademark Office.

Normal business days of the week are:

Monday through Friday.

D. Extensions

The opposition term is not extendable.

X. Filing Requirements

A. Minimum Filing Requirements

The minimum filing requirements to initiate an opposition (i.e., to obtain a filing date) are:

opposition form indicating the following information: name; real and established address for the procedings of the opponent, its tax number and its email address; trademark opposed and its serial act; class and publication date; number of the gazette in which it was published; name of the applicant; grounds of the opposition; certification of fee paid.

When opposition has been filed by an empowered agent or attorney, his name; information about the filing of the power of attorney with the Trademark Office; the names of the persons authorized by the empowered agent or attorney to file presentations at the Trademark Office. The opponent must declare whether it renounces court actions (in favor of resolution by the Trademark Office). Any other observation may be filed.

official fee.

The following additional actions or documentation is required to complete the required filing formalities (i.e., to shift the burden of action to the registration applicant) and will be accepted after the opposition deadline has expired:

power of attorney (which can be filed 60 running days after filing. It must be certified by a notary public (which will certify the identity of the signer and its capacity to grant the power of attorney) and then Apostilled, or legalized up to the Argentine consulate.);

evidence, as follows: Documentary evidence can be filed only at the Trademark Office.

B. Payment of Official Fees

Opposition fees can be paid using the following payment modes:

money transfer (The money transfer is a very specific payment made through the tax authority.);

cash or check.

C. Public Inspection of Documents

Documentation submitted in an opposition is open to public inspection at any time.

The law does not specify whether requests can be made for specific opposition documentation to be treated as confidential and not laid open to the public. Nothing is foreseen in the Trademark Law, but if someone asks that the information be kept confidential, it should be kept as such.

D. Additional Grounds

Additional grounds of opposition may be introduced to the proceeding after an opposition has been filed. The deadline for introducing additional grounds is: when ratification of the opposition is made at the Trademark Office.

The deadline for introducing additional grounds is: 15 days after the Trademark Office notifies the opponent to do so. It should happen if the parties have not settled the matter within three months as from the date the applicant was notified of the opposition.

E. Representation

The opponent is required to act through a locally authorized representative during the entire proceeding, but only if the opponent is foreign.

F. Language and Translations

Opposition documents must be submitted in the following local official language(s): Spanish.

Opposition documents may be submitted in a language (or languages) other than the one(s) listed above, as follows: Documents can be filed in a foreign language with a translation into Spanish (referring to documents filed in other languages by any of the parties in the opposition proceeding).

When opposition documents are submitted in a language or languages other than the local official language(s), translations are required to be submitted at or by the following time: In principle, the translation must be filed with the document in a foreign language.

XI. Post-Filing Stages and Procedures

A. Sequence and General Considerations

Depending on the jurisdiction, opposition proceedings generally involve a number of stages between the filing of the opposition and the official decision or judgment. Typically, the post-filing stages will require either that alternating actions be taken by one party after the other in consecutive steps or that actions to be taken concurrently by both parties.

This jurisdiction does not conform to the general description provided above, in that: if the parties do not reach a settlement after opposition, the opponent must ratify its opposition, with arguments and documentary evidence; the applicant must answer and also may file documentary evidence. Both parties will then have the possibility of filing a new writ with opinions on evidence produced, and then the Trademark Office will decide.

A full discussion of the opposition stages is beyond the scope of this publication. Please consult a local attorney for specifics about the sequence of stages and the duration of and requirements for each. The following is a non-exhaustive list of issues to consider when consulting your local counsel:

The general sequence of stages from the filing of the opposition until the official judgment or decision.

When each party must submit documentation/evidence.

What documentation/evidence is required.

The approximate duration of particular phases as well as the approximate length of the entire proceeding.

Whether either party can request extensions.

If extensions can be requested, when, for what reasons and for what length of time.

If and when the parties (or their representatives) are required to appear in person before the opposition authority, or whether written statements may be submitted.

The consequences of either party's not performing its responsibilities during any stage of the opposition.

The official fees or other expenses, including local attorney fees, that will apply to an opposition procedure.

B. Length of Opposition Procedure

The approximate length of time from the filing of an oppostion to an official decision concluding the opposition procedure is: It is presumed that the process with the Trademark Office will be much shorter than what it takes with the court. There is no experience as to duration, but it can be guessed that it will not surpass one year. Then there is the term to substantiate an eventual appeal at the Federal Civil and Commercial Court of Appeals, which can go from six months to a year.

C. Monetary Awards

The opposition authority has no power to make formal monetary awards (costs, official or attorney fees, or other compensation) to the parties.

D. Withdrawal of Oppositions or Applications

Withdrawal of an opposition with or without the agreement of the applicant/registrant to the terms of the withdrawal automatically terminates the proceedings.

Withdrawal of an opposition without the agreement of the applicant/registrant to the terms of the withdrawal does not have any consequences with regard to the award of costs. The opponent is free to withdraw the opposition at any time without need of consent from the applicant, and unless there is an extraordinary circumstance, there are no consequences for the opponent.

Withdrawal of an opposed application with or without the agreement of the opponent to the terms of the withdrawal automatically terminates the proceedings.

Withdrawal of an opposed application without the agreement of the opponent to the terms of the withdrawal does not have any consequences with regard to the award of costs. A withdrawal is a withdrawal, and if there are conditions there is no withdrawal unless agreed by the applicant.

Withdrawal of an opposition or of an opposed application outside this jurisdiction (with or without the agreement of the other party to the terms of the withdrawal) has no effect on opposition or other proceedings in this jurisdiction.

If the opponent has withdrawn the opposition, the opposition authority can still reject the opposed application on any of the opposition grounds.

A formal basis is not required for withdrawal of an opposition.

The limitation or restriction of the applicant's goods/services, with or without a written settlement agreement, is commonly a basis for withdrawal of the opposition. The withdrawal of the opposition must be filed in the procedure.

The terms of a settlement agreement need not be disclosed to the opposition authority.

The opposition authority need not approve any settlement reached and/or formal withdrawal of the opposition. If the settlement is made in the judicial stage, the judge may not approve the settlement, though this happens very rarely.

XII. Appeals

A. Availability/Deadline

An opposition decision may be appealed. The decision of the Trademark Office can be appealed at the Federal Civil and Commercial Court of Appeals of Buenos Aires city.

The following party or parties may file an appeal: Either party may appeal the decision.

The deadline for filing an appeal is: 30 days.

B. Forum

There is a single appeal authority, the name of which is: Federal Civil and Commercial Court of Appeals of Buenos Aires city.

The following appeal authority/authorities is/are independent of the Trademarks Registry/Office: the Federal Civil and Commercial Court of Appeals.

C. Cost/Monetary Bonds or Surety

The government/official fees for filing an appeal are: approximately USD 16.

The approximate range of attorney fees for filing an appeal is: USD 1,500-5,000, depending on the work to be done in the appeal.

The government/official fees for prosecuting an appeal to conclusion are: Not applicable.

The approximate range of attorney fees for prosecuting an appeal to conclusion is: See above. If there is an extraordinary appeal at the Supreme Court, the fees will be discussed with the attorney on a case-by-case basis.

Monetary bonds or other surety is not required of foreign appellants if they have no domicile or assets in the country.

D. Higher Appeals: Availability/Monetary Bonds or Surety

An appeal decision is not final; higher appeals are possible and can be made to: the Supreme Court, on extraordinary occasions.

On higher appeal, there are no provisions requiring monetary bonds or other surety from a foreign appellant.

E. Other Circumstances

Important circumstances of appeal that are not mentioned above include: None.

XIII. Other Issues

A. Subsequent Infringement Proceedings

In subsequent equivalent infringement proceedings, an opposition decision is not binding on the court. However, it will have an almost determinant influence.

B. Local Requirements/Perspectives

Particular local requirements that are not covered above and that are not common in other jurisdictions or familiar to foreign practitioners include: None. There are no such particularities.

C. Anticipated Revisions of the Law

Important changes in relevant law are not anticipated in the near future.

XIV. Alternatives

A. Cancellation

There are procedures available whereby third parties can apply to cancel or partially cancel a registration (whether or not an opposition has been filed). The INPI must now implement the administrative proceedings to be applied both to nullity actions and to cancellation actions for non-use. It is to be determined whether the courts will continue to decide these cases, since the administrative procedural law establishes that courts of law are the only ones that can decide these cases.

These procedures are known (or translate into English) as:

cancellation;

nullity.

The grounds to initiate a cancellation are:

the mark is descriptive;

the mark is misleading and/or deceptive;

the mark lacks distinctiveness;

the mark is generic;

the mark consists of a geographical indication;

the mark is functional;

the mark is against public policy or principles of morality;

the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention;

the mark includes a badge or emblem of particular public interest;

the mark is used in a misleading and/or deceptive manner;

the mark is prohibited in this jurisdiction;

the application for or registration of the mark was made in bad faith;

there is an earlier application or registered mark;

there are earlier use-based rights in an unregistered mark;

the mark is covered by a copyright;

the mark is a company name;

the mark is notorious or well known (Article 6bis of the Paris Convention);

the trademark application was filed or the registration was granted in the name of an agent or other person with a business connection to the owner of the mark (Article 6septies of the Paris Convention);

the mark is a trade or business name;

the mark is a domain name;

any legitimate interest of the plaintiff will be sufficient grounds, e.g., that the registration of the mark was improperly granted.

The grounds to initiate a nullity are:

the mark is descriptive;

the mark is misleading and/or deceptive;

the mark lacks distinctiveness;

the mark is generic;

the mark consists of a geographical indication;

the mark is functional;

the mark is against public policy or principles of morality;

the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention;

the mark includes a badge or emblem of particular public interest;

the mark is used in a misleading and/or deceptive manner;

the mark is prohibited in this jurisdiction;

the application for or registration of the mark was made in bad faith;

there is an earlier application or registered mark;

there are earlier use-based rights in an unregistered mark;

the mark is covered by a copyright;

the mark is a company name;

the mark is notorious or well known (Article 6bis of the Paris Convention);

the trademark application was filed or the registration was granted in the name of an agent or other person with a business connection to the owner of the mark (Article 6septies of the Paris Convention);

the mark is a trade or business name;

the mark is a domain name;

any legitimate interest of the plaintiff will be sufficient grounds, e.g., that the registration of the mark was improperly granted.

To compare the grounds for the above procedures to the grounds for opposition, please see Section III. Grounds: A. Absolute, Relative and Other Grounds

The burden of proof is on both parties to prove the allegations and defenses on which they rely in the cancellation action. The burden of proof is on the person who invokes a fact, but if the other party has evidence that proves otherwise, he should present it.

The burden of proof in an opposition is the same as it is for a cancellation. The party that alleges a fact must prove it, whether the opponent or the applicant.

It cannot be said that cancellation or equivalent proceedings are or are not preferable to opposition proceedings in some circumstances, as they seek different results and are not alternatives to one another. A cancellation action is no alternative to an opposition. Only when the opposition is no longer possible does the party concerned go to a cancellation action procedure, and that is longer and more expensive.

B. Observations and Letters of Protest

There are procedures for official consideration of third-party objections to grant (e.g., observations, letters of protest, etc.), but these cannot be relied upon to be reviewed and result in official objection even if well based. Unless the purpose is to point out the existence of an identical or very similar mark, or of evident misappropriation, informal observations are not taken into consideration.

The deadline for raising such objections is: anytime before the mark is granted.

Such objections must be made to the Trademarks Registry/Office.

The legal representative must identify his client in such objections.

The following grounds may be raised in such objections:

the same as those for cancellation;

the same as those for opposition.
 

ARGENTINA TRADEMARK CANCELLATION PROCEDURE

I. Availability

A. Availability

Cancellation of a trademark is available for:

national marks.

This jurisdiction is not a member of the Madrid System; we have no international marks.

This jurisdiction is not a member of the European Union; we have no European Union Trade Marks.

"Cancellation" is not defined by legislation. Cancellation may refer to both nullity and cancellation for lack of use.    

Article 24 of the Argentinean Trademark Law (Law No. 22,362 on Trademarks and Designations of December 26, 1980, as amended) defines the basis for obtaining the nullity of a trademark: "The following marks shall be null and void: (a) those registered in breach of the provisions of this Law; (b) those registered by anyone who, at the time of applying for registration, knew or should have known that the marks belonged to a third party; (c) those registered for the purpose of marketing by persons who habitually register marks for that purpose."       

Article 26, which has been amended by Decree No. 27/2018, includes the possibility of requesting cancellation ex officio. It provides that disputes will be decided by the National Institute of Industrial Property and may be revised by the Federal Court. In addition, it provides that a trademark can be partially cancelled for the products or services in connection with which it has not been used, unless use has been effected in relation to the commercialization of a related product or the rendering of a related service.

Cancellation actions cannot be filed online.

II. Grounds

A. Absolute Grounds

The following absolute grounds may be raised in cancellation proceedings:

the mark is descriptive;

the mark is misleading and/or deceptive;

the mark lacks distinctiveness;

the mark is generic;

the mark consists of a geographical indication;

the mark is functional;

the mark is against public policy or principles of morality;

the mark has not been authorized by competent authorities pursuant to Article 6ter of the Paris Convention;

the mark includes a badge or emblem of particular public interest;

the mark is used in a misleading and/or deceptive manner;

the mark is prohibited in this jurisdiction;

the application for or registration of the mark was made in bad faith;

the name, pseudonym or portrait of a person without his consent or of his heirs up to the fourth degree;

the names of activities, including firm names, that describe an activity may not be registered to distinguish products. Nevertheless, initials, words and other signs having distinctive capacity that form part of such names may be registered to distinguish products or services.

B. Relative Grounds

The following relative grounds may be raised in cancellation proceedings:

there is an earlier application or registered mark;

there are earlier use-based rights in an unregistered mark;

the application for or registration of the mark was made in bad faith;

the mark is covered by a copyright;

the mark is notorious or well known (Article 6bis of the Paris Convention);

the mark is a trade or business name;

the mark is a domain name.

C. Grounds Other Than Absolute, Relative or Non-Use

Other than the absolute or relative grounds listed above and/or the non-use grounds listed below, there are no other grounds that may be raised in cancellation proceedings.

D. Non-Use Grounds

Non-use may be raised as a ground in cancellation proceedings.

In relation to cancellation for non-use, "use" is defined as: Article 5 of the Argentinean Trademark Law provides that a mark shall be registered for a period of 10 years. The mark may be renewed indefinitely for equal periods if it has been used within the five years preceding each renewal date in the commercialization of a product or the rendering of a service, or as part of the designation of an activity.

The definition of "use" provided above is derived from statute, regulation or administrative rule: Article 5 of the Argentinean Trademark Law.

Use by a licensee or with the consent of the proprietor constitutes use by the proprietor.

The time frame within which a mark must be used in order to avoid cancellation runs from:

Article 26 of the Argentinean Trademark Law, as amended by Decree No. 27/2018, provides that "the cancellation of a trademark shall be declared when it has not been used in the country within the five (5) years preceding the date on which such claim is filed, unless there are reasons of force majeure."

Counting from the above date to avoid cancellation for non-use, the mark must be used within: five years preceding each renewal due date. (Article 5 of the Argentinean Trademark Law.)

The consequences of use's being interrupted are: If the trademark is not used during the five years previous to each expiration date, it can be declared lapsed. (Articles 5 and 26 of the Argentinean Trademark Law.)

E. Multiple Grounds

An application for cancellation may be based on multiple grounds (i.e., on a combination of absolute, relative and non-use grounds).

The advantages of filing an action based on multiple grounds are as follows: having more opportunities for a successful outcome.

If an action is based on multiple grounds and the action could be disposed of on one ground, the other grounds will nevertheless be considered in some instances.

G. Introduced Later in Proceedings

Additional grounds for cancellation may be introduced at a later stage in the proceeding. The deadline for introducing additional grounds is: Not applicable.

III. Forum

A. Forum

The forum for cancellation proceedings is the same, regardless of the grounds on which the proceedings are brought.

Cancellation proceedings on all grounds may be brought before the following administrative body: Instituto Nacional de la Propiedad Industrial (National Institute of Industrial Property).

The administrative body/bodies listed above is/are not independent of the trademark registry.

IV. Standing

A. On Basis of Grounds

The following parties have legal standing to apply for cancellation, regardless of the grounds for cancellation:

any person. Legal interest is not required.

In addition, the National Institute of Industrial Property may require cancellation ex officio.

B. Person/"Interested Person" Defined

For purposes of standing, a “person” is defined as:

both natural and juridical persons.

For purposes of standing, an “interested person” is defined as:

someone who believes he is being damaged by the registration;

someone who has filed an earlier, pending application to register a conflicting trademark;

someone who owns an earlier conflicting trademark registration;

someone who owns earlier rights in a copyright or design that conflicts with the mark that is the subject of the trademark application;

someone who owns rights in a conflicting trademark that were acquired through use;

someone who is a licensee of any conflicting trademark or other intellectual property right;

someone who owns a company name that conflicts with the mark that is the subject of the trademark application;

someone who is of the opinion that the mark was not registrable.

C. Domestic/Foreign Applicant

The legal standing criteria for domestic and foreign applicants are the same, regardless of the grounds for cancellation.

D. Multiple Applicants

More than one applicant may apply jointly for cancellation based on:

non-use grounds.

E. Infringement Defendant as Applicant

In a court action for trademark infringement, cancellation of the plaintiff's trademark registration may be sought by a defendant.

V. Representation

A. Qualifications

The applicant can choose whether to appoint a representative (attorney, agent or other legal representative) in cancellation proceedings. Appointment of a representative is not mandatory.

The representative must be domestic, i.e., with an office in the jurisdiction.

Additional professional qualifications required of a representative in cancellation proceedings are as follows: The representative must be an attorney at law.

B. Power of Attorney-- Notarization/Legalization Requirements

A signed power of attorney must be provided to a representative by an applicant in cancellation proceedings.

To validate the power of attorney, the following notarization/legalization requirements must be met in cancellation proceedings: The power of attorney must be duly notarized and further legalized before an Argentine consulate or by Apostille.

VI. Commencement

A. Timing

Cancellation proceedings that are independent of opposition proceedings may be commenced before a mark is registered, regardless of the grounds on which they are based.

B. Deadline

There is never a deadline for bringing cancellation proceedings, regardless of the grounds for cancellation.

C. Statute of Limitations

The following statute of limitations or acquiescence provisions will prevent cancellation, regardless of the grounds for cancellation: use in connection with a product or service covered by the trademark registration or goods or services related to those covered by the challenged registration or as part of a business or trade name that identifies an activity related to goods or services protected by the trademark registration.

VII. Partial Cancellation

A. Partial Cancellation

Partial cancellation of a registration is possible, regardless of the grounds for cancellation. (Article 26 of the Argentinean Trademark Law, as amended by Decree No. 27/2018.)

For single-class registrations, it is possible to apply for cancellation of some of the goods within the single class. Multiclass registrations are not permitted in this jurisdiction.

VIII. Length of Proceedings

A. Length of Proceedings

The average duration of cancellation proceedings is: usually between four and five years.

After final arguments have been made and/or oral hearings have taken place, a decision will be rendered within the following time frame: between 40 and 60 days, according to the Code of Civil and Commercial Procedure.

IX. Costs and Fees to Initiate

A. Costs and Fees to Initiate

The following costs and fees are associated with initiating cancellation proceedings:

attorney fees;

statutory or regulatory fees;

administrative costs relating to power of attorney;

administrative costs relating to legalization and/or notarization.

No official fees are refundable if an application for cancellation is withdrawn, regardless of the grounds for cancellation.

If an application for cancellation is based on multiple grounds, no additional official fees are due.

X. Documentation-- Notarization / Legalization Requirements

A. Documentation-- Notarization / Legalization Requirements

The following documents must be notarized in cancellation proceedings, regardless of the grounds for cancellation: All relevant proof must be notarized.

The documentation that must be submitted and the procedures necessary to initiate cancellation proceedings are the same, regardless of the grounds for cancellation, and are as follows: all relevant documentary proof, including, but not limited to, the power of attorney; all evidence under control or administered by the defending party.

XI. Discovery

A. Interrogatories

No party may request that any other party answer written questions, under oath ("Interrogatories").

B. Document Requests

Any party may request that any other party produce documents in response to written document requests ("Document Requests").

The general rules concerning the timing, number and scope of Document Requests are: as per the Code of Civil and Commercial Procedure.

If the requested party fails to provide documents in response to Document Requests, in whole or in part, the procedure by which the requesting party can compel compliance is as follows: under the law, a warning of considering the fact to be proven.

If the requested party fails to provide documents in response to Document Requests, in whole or in part, the consequences are as follows: The fact intended to be "proven" is assumed to be true.

There are no grounds on which the requested party may justify its refusal to produce documents in response to Document Requests, in whole or in part.

Documents obtained in response to Document Requests may be used as evidence in the action.

C. Depositions

Any party may request that one or more witnesses for any other party appear in person to be cross-examined under oath ("Depositions").

The rules concerning the timing, location, subject and permitted scope of inquiry of a Deposition are as follows: As defined in the Code of Civil and Commercial Procedure, the witness makes a statement on the facts in a hearing scheduled for that purpose. The scope of inquiry must be strictly connected to the matter discussed in the file.

If the requested party fails to provide a requested witness for a Deposition or fails to answer certain questions during a Deposition, the procedure by which the requesting party can compel compliance is as follows: The witness can be summoned by the police.

If the requested party fails to provide a requested witness for a Deposition or fails to answer certain questions during a Deposition, the consequences are as follows: The party can lose the trial on grounds of lack of evidence.

The grounds on which the requested party may justify its refusal to appear for or to answer questions in a Deposition, in whole or in part, and the circumstances in which these grounds are applicable are as follows: illness or disability.

Answers provided during Depositions may be used as evidence in the action.

XII. Burden of Proof

A. Burden of Proof

The burden of proof can shift to the other party during the course of cancellation proceedings under the following circumstances: As a general rule, the party that states a fact has the burden of proof.

XIII. Written Arguments

A. Requirement/Deadline

Written arguments are mandatory.

The deadline for the applicant to submit written arguments is determined by statute, rule or regulation and is: as determined by the Code of Civil and Commercial Procedure. 

XIV. Oral Hearings

A. Oral Hearings

Oral hearings are permitted in cancellation proceedings.

The determination of whether oral hearings will take place is made by: the court.

XV. Evidence

A. To Establish Absolute Grounds

The following types of evidence may be submitted to establish absolute grounds: Documentary evidence and expert testimony may be enclosed with the brief of complaint.

B. To Establish Relative Grounds

The following types of evidence may be submitted to establish relative grounds: Not applicable.

C. To Establish Non-Use Grounds

The following types of evidence may be submitted to establish non-use grounds: Not applicable.

E. Applicant's Proof of Use

The applicant must submit proof of use of the mark on which the cancellation is based.

F. Applicant's Extensions of Time

Extensions of time for the applicant's submission of evidence are not possible.

G. Additional Evidence

Additional evidence may be submitted at a later stage in the cancellation proceedings. The deadline for submitting additional evidence is: If the evidence constitutes a "new fact," it should be offered prior to the commencement of the evidence stage of the proceedings.

H. Evidence in Reply/Deadline and Extensions

Evidence in reply is mandatory. If the party does not answer, it will lose the trial.

Evidence in reply must be submitted by the following deadline: within 15 working days of notification of the complaint.

Extensions of time for the respondent's submissions are not available.

Petitioner cannot demand that respondent provide additional particulars relating to the respondent's proffered evidence.

I. Proof of Respondent's Use

The respondent may submit the following kind of evidence to prove use:

invoices;

catalogues;

evidence of turnover;

packaging;

labels;

price lists;

advertisements;

written statements;

market surveys;

use of the mark on the Internet;

maintenance of a website.

In assessing whether "use has been made," sufficient use is demonstrated by: any of the types of evidence above. 

The following factors are considered when determining whether a mark has been sufficiently used:

the nature of the goods or services at issue;

market characteristics;

the scale and frequency of use of the mark;

export use.

Respondent cannot demand that petitioner provide additional particulars relating to the petitioner's proffered evidence.

J. Consequences of Failure to Respond

The consequences if a respondent fails to file a response or answer to a petition for cancellation are as follows:

The court, other judicial tribunal or administrative agency may consider and decide the matter on the merits despite such failure.

XVI. Defenses

A. Acquired Distinctiveness

Acquired distinctiveness can be a valid defense in cancellation proceedings based on absolute grounds.

B. Excusable Non-use

Non-use can be excused, thereby avoiding cancellation, if: there were force majeure reasons.

XVII. Monetary Awards/Attorney Fees

A. Basis/Amount of Award

A cancellation decision may include a formal monetary award against the losing party, regardless of the grounds for cancellation. The losing party may be deemed to pay costs.

Monetary awards are based on:

actual losses.

The amount of a monetary award is likely to be influenced by the following circumstances: any circumstance that the judge may consider relevant at the moment of fixing the monetary award; for example, but not limited to, that the application or registration was made in bad faith or would lead to the unjust enrichment of the applicant/registrant; the efforts and performance of the attorney representing the winning party; the cost of the intervention of technical experts.

B. Attorney Fees

The successful party is entitled to recover attorney fees in cancellation proceedings, regardless of the grounds for cancellation.

The award of attorney fees in cancellation proceedings is:

mandatory.


XVIII. Conclusion of Proceedings

A. Effect of Decision

A decision in cancellation proceedings is valid against all third parties, regardless of the grounds for cancellation.

A decision ordering cancellation of a mark takes effect: from the moment the decision becomes final.

B. Withdrawal or Termination of Proceeding/Costs

Cancellation proceedings can be terminated by withdrawing the cancellation application, regardless of the grounds for cancellation.

Withdrawal of a cancellation application does not require the approval of the court, other judicial tribunal or administrative body; termination is automatic.

Withdrawal of a cancellation application based on any grounds requires the approval of the other party to the proceedings, regardless of the grounds for cancellation.

When cancellation applications are withdrawn, the cost of the proceedings is borne by: the party that stops the proceedings. This may be different if the parties reach an agreement.

XIX. Appeals

A. Availability/Deadline

A cancellation decision may be appealed.

Appeals of cancellation decisions must be brought before the following deadline: within five working days of notification of the verdict.

B. Forum

The court, other judicial tribunal or administrative body that hears an appeal is determined by the grounds on which the cancellation proceeding was brought.

C. New Evidence

New evidence may be submitted on appeal.

D. Representation/Cost/Awards

The approximate cost range of official fees (in local currency) to file an appeal is: approximately USD 50 per mark.

Specialist counsel is not required, but is recommended, for an appeal of a cancellation decision.

An appeal decision cannot include a monetary award against the losing party if the earlier decision did not include a monetary award.

E. Scope

An appeal consists of a complete rehearing of the matter. In an appeal, the prior judgment is reviewed.

F. Further Appeals/Alternatives to Appeal

Appeal decisions may be further appealed.

Appeal decisions may be appealed to: the Supreme Court of Justice, provided that there is a federal cause or unjust action.

Details regarding the deadlines and fees for further appeal are as follows: by the Supreme Court of Justice, on extraordinary appeal, within 10 working days of the notification of the verdict of first appeal; or by an appeal filed when a lower court judge improperly refuses the appeal, within five working days of the extraordinary appeal rejection, by depositing the equivalent in local currency of USD 3,400.

There is no alternative procedure to an appeal.

XX. Consequences

A. Status of Mark After Cancellation

The terminology relating to cancellation proceedings can vary from jurisdiction to jurisdiction. Within jurisdictions, the grounds for bringing a cancellation proceeding can ultimately influence the legal consequences of the cancellation.

In this jurisdiction, regardless of the grounds for cancellation, if an applicant is successful in obtaining cancellation, the legal consequence is that:

the mark is considered as having been validly registered until the date of the decision to cancel the mark.

If an applicant succeeds in obtaining cancellation on absolute grounds:

the mark is considered as having been validly registered until the date of the decision to cancel the mark.

If an applicant succeeds in obtaining cancellation on relative grounds:

the mark is considered as having been validly registered until the date of the decision to cancel the mark.

If an applicant succeeds in obtaining cancellation on non-use grounds:

the mark is considered as having been validly registered until the date of the decision to cancel the mark.

If an applicant succeeds in obtaining cancellation on grounds other than absolute, relative or non-use grounds:

the mark is considered as having been validly registered until the date of the decision to cancel the mark.

B. Licenses, Assignments, Other Transactions

The consequences for past assignments if a mark is cancelled are: The assignee does not retain any right in the assigned mark.

The consequences for past licenses if a mark is cancelled are: The licensee does not retain any right in the licensed mark.

The consequences for past contracts if a mark is cancelled are: The party that acquired the right does not retain any right.

XXI. Notification to TM Office

A. Notification to TM Office

Following a decision to cancel a mark, the Trademark Office must be formally notified of the cancellation, regardless of the grounds for cancellation.

The following party has the responsibility to notify the Office: the winning party.

The deadline to make the notification is: None.

The consequences of failing to meet the deadline to notify the Trademark Office are: There is no deadline, but until the Trademark Office is notified of the cancellation, the registration remains in force.

XXII. Refiling of Identical Mark

A. Refiling of Identical Mark

There are limitations as to when an application to register the mark can be refiled, depending on the grounds for cancellation.

There are no time limits for refiling following the cancellation of a mark.

XXIII. Collective Marks

A. Collective Marks

Collective marks may be registered in this jurisdiction. A collective mark is defined as: a trademark that distinguishes the goods manufactured and/or services rendered by social associations created for the development of the domestic economy. (Article 1 of the Collective Trademark Law (Law No. 26,355 of February 28, 2008), which was published in the Official Gazette on March 27, 2008.)

There are certain unique provisions in the law of this jurisdiction in relation to the cancellation of collective marks on absolute, relative, non-use or other grounds, as follows: According to Article 11 of the Collective Trademark Law, "Notwithstanding the provisions of Law No. 22,362 and the Regulatory Decree of the Trademarks and Trade Names Law (Law No. 558/81), modified by Decree No. 1141/2003, with regard to the application for registration, the specific reason for nullity is the non-fulfillment of the requirement of Article 3 of the present Law; and the specific reason for refusal is that the regulations of use are contrary to law, to public order, to morals and good manners or are misleading about the collective character of the mark in question."

XXIV. Certification Marks

A. Certification Marks

Certification marks may be registered in this jurisdiction. A certification mark is defined as: In Argentina, the same definition provided by WIPO applies: Certification marks usually are given for compliance with defined standards. They may be used by anyone who can certify that the products involved meet certain established standards.

The provisions discussed throughout this jurisdictional profile all apply to the cancellation of certification marks.

TRADEMARK ENFORCEMENT IN ARGENTINA

I. Pre-filing Requirements/Demand Letters

A. Pre-filing Requirements/Demand Letters

Although it is not mandatory to send a demand letter before instituting proceedings in this jurisdiction, it is common to send such a letter.

Before initiating an infringement proceeding in this jurisdiction, a party must attempt to settle with the other party. Before initiating an infringement proceeding it is mandatory to summon the other party to a mediation procedure in an attempt to settle. However, it is not mandatory to summon the other party to a mediation procedure before initiating an injunction or precautionary measure.

Before initiating an infringement proceeding, a party must engage in mediation or other alternative dispute resolution proceeding with the other party. Before initiating an infringement proceeding it is mandatory to summon the other party to a mediation procedure in an attempt to settle. However, it is not mandatory to summon the other party to a mediation procedure before initiating an injunction or precautionary measure.

Before initiating an infringement proceeding, a party is required to take the following actions: none.

Before initiating an infringement proceeding, a party may take the following actions: none.

The name for such a letter is: Carta documento; the common translation is "cease and desist letter."

Such a letter should be sent at the following time: It is advisable to send it immediately after becoming aware of the infringement, to avoid inadvertently consenting to the infringement and to act before the time limit for claiming damages expires.

Such a letter can be sent by:

the owner of the mark;

an attorney for the owner of the mark.

Specific rules/customary practices applicable to such letters include:

the form or content of the letter (see below);

the reasonableness of the demand;

allowing sufficient time for response.

With regard to the form or content of the letter, the following details are commonly included:

identification of claimant;

details of alleged rights infringed;

identification of any trademark registrations owned by the objecting party;

details of the alleged infringement;

potential claims (other than infringement), e.g., damage claims or costs;

time for response;

consequences of not responding within the time set out in the letter;

threat of legal action;

request for undertaking, including obligation to pay contractual penalty for future infringement;

request for summary of sales, revenues and/or profits derived from the use of the allegedly infringing mark;

request for identification of customers and/or suppliers of products bearing the allegedly infringing mark.

The consequences of not following the particular rules/customary practices listed above when drafting the letter are: none.

The length of time within which to allow the recipient to respond to the letter that is considered reasonable is: While it should be evaluated on a case-by-case basis, in general it is five days.

The following factors are taken into consideration when determining the length of time that is considered reasonable: The time that the other party would need to evaluate the claim with its lawyers and prepare the response.

The benefits of sending a demand letter before initiating infringement proceedings rather than immediately initiating proceedings without sending a demand letter include:

avoidance of penalties or cost awards;

may help ascertain that infringement was inadvertent;

may help ascertain whether alleged infringer has meritorious defenses;

results may be achieved more quickly and at lower cost;

may provide a basis for a claim of willful infringement;

may be viewed favorably in litigation by decision maker;

may lead to negotiations and avoid the need to commence proceedings.

The potential consequences of sending such a letter include:

plaintiff may be deprived of an interim ex parte order on the first date of hearing because the defendant has been put on notice;

destruction of evidence;

loss of the element of surprise, giving infringer time and opportunity to prepare a defense.

Factors to consider if a demand letter is sent and proceedings for infringement are not initiated include:

the claim may be barred by time limits or statute of limitations;

the claim may be barred by delay or acquiescence;

loss of credibility in enforcement actions.

II. Claim for Infringement of a Registered Trademark

A. Claim for Infringement of a Registered Trademark

There is only one court system or administrative body that has jurisdiction over claims for infringement of a registered trademark, which is: the Federal Courts for Civil and Commercial Matters.

The following parties have standing/authority to institute proceedings for infringement of a registered trademark:

the registered proprietor of a mark;

the equitable owner of a mark.

If there is more than one registered proprietor/owner, they need not all join in instituting the proceeding.

Trademark infringement proceedings are decided by a judge with no jury. The judge's decision could be appealed and then reviewed by a panel of three judges.

The time limit for initiating trademark infringement proceedings is: There is no limit for initiating trademark infringement proceedings. An action may be initiated at any time provided that the mark is still used. However, there is a three-year legal time limit to claim for damages.

Once infringement proceedings are initiated, the stages of the proceedings include:

filing of claim (including presentation of facts and legal arguments);

filing of reply/defense to claim;

filing of counterclaim;

filing of evidence;

mediation (The mediation is a mandatory pretrial procedure; however, the judge is empowered to request the parties to go through a mediation procedure during the judicial proceeding.);

discovery;

expert discovery;

preliminary motions (to dismiss, for preliminary injunction or temporary restraining order);

filing of briefs/written arguments;

oral hearing;

oral testimony/examination of witness;

judgment/decision;

damages (or other financial relief) assessment.

The average amount of time from the instituting of infringement proceedings through trial/final hearing is:

between one and two years.

The average amount of time from the end of the trial/final hearing to the issuance of judgment is:

between six months and one year.

III. Claim for Infringement of Unregistered Trademark/Unfair Competition/Passing Off

A. Claim for Infringement of Unregistered Trademark/Unfair Competition/Passing Off

Unregistered trademarks are protected under the following laws:

common law of tort;

case law.

The following parties have standing/authority to institute proceedings for infringement of an unregistered trademark:

the owner of the unregistered right.

If there is more than one owner of an unregistered trademark, they need not all join in instituting the proceedings.

It is possible to institute a single proceeding for both registered trademark infringement (under the trademark law) and unregistered trademark infringement (under the law(s) listed above).

IV. Civil Enforcement-- Emergency Measures

A. Ex Parte Injunctions

Ex parte injunctions are available to claimants seeking emergency relief.

When applying for an ex parte injunction, it is not necessary to institute infringement proceedings at the same time.

The types of ex parte injunction available include:

prohibitory (to prohibit the defendant from performing certain acts);

mandatory (to require the defendant to perform certain acts).

There is no specified statutory or court-determined deadline for seeking an ex parte injunction.

A delay in applying for an ex parte injunction after becoming aware of the alleged infringing activities can prevent the applicant from obtaining the desired relief under the following circumstances: if the judge considers that there is no danger in the delay (periculum in mora), as this is one of the requirements to grant such an exceptional measure.

The purpose of an ex parte injunction is:

to restrain further infringing activities until trial or a further hearing;

to prevent the consequences of an infringement or violation;

to obtain or preserve evidence;

to ensure the effectiveness of the eventual remedy;

to preserve the status quo;

to prevent irreparable injury.

The strategic benefits of obtaining an ex parte injunction include:

it may put an end to the infringement and litigation quickly (Please note: The order to immediately stop using the mark that is granted by the judge during an injunction is provisional. The definitive end to the infringement will be obtained after going through a legal action in which the trademark owner proves its prior rights and the infringement by all means of evidence available.);

it may save costs;

obtaining or preserving evidence;

reducing potential damage caused by infringement.

The risks of seeking an ex parte injunction (if it is not granted) are:

increased costs of the proceedings;

potential for a damages claim under the bond or cross-undertaking.

An ex parte injunction remains in place:

until further order by the court.

The defendant is notified of the grant of an ex parte injunction:

by the plaintiff.

The plaintiff must notify the defendant within the following time frame: three months.

The procedure for applying for an ex parte injunction includes the following:

motion;

supporting documentary evidence;

order;

posting bond, cross-undertaking or other security.

The amount of the bond or cross-undertaking is determined based on:

the potential damage/losses to the defendant caused by an improvidently entered injunction.

The factors considered in the granting of an ex parte injunction are:

inadequacy of damages as a remedy;

whether the status quo should be preserved;

likelihood of success on the merits;

urgency;

timeliness with which plaintiff sought the injunction.

The following forms of evidence are admissible in support of an ex parte injunction application:

written witness statements (admissible but not usual);

documents;

affidavits (admissible but not usual);

samples of infringing product(s);

the receipt for purchase of the infringing product; notary attestation of the purchase of the infringing product or of the printout of websites.

If the court later finds that the ex parte injunction was granted in error, the applicant will be required to:

compensate the defendant for damages suffered from the injunction;

forfeit its bond, which is paid to the defendant (If the bond is not sufficient to pay the amount fixed by the judge to compensate for damages, the plaintiff must pay the remaining amount.).

The cost of obtaining an ex parte injunction, including attorney fees and court costs (but not including the cost of a bond), is approximately:

between USD 10,000 and 50,000.

The costs of an ex parte injunction are recoverable as follows: If the plaintiff prevails, it is possible to request the reimbursement of the legal cost (i.e., the official fees, the costs for a notary attestation and/or the costs for translation of documents). To that end, the plaintiff should file a brief requesting the reimbursement, supported by evidence of the legal costs. This brief will be conveyed to the defendant, who will be able to accept or reject paying the costs. If the defendant rejects paying the costs, the judge will render a decision.

On average, an ex parte injunction is issued within the following time period (counting from the filing of the application to the issuance of the injunction):

between two and 10 days.

In an ex parte proceeding, a party may request an order to enter the premises of another party and to search for property/documents/items that may become evidence (i.e., a “search order” or “search and seizure order”). Please note: If the judge grants the search and seizure order, the plaintiff will have to initiate a legal action to prove its prior rights and the infringement. Should the infringement not be proved, the plaintiff will have to compensate the damages that the measure caused to the owner of the premises.

The following party or parties will be present at the inspection:

the marshall, sheriff or other law enforcement officer;

the party who obtained the order;

the party against whom the order is granted (if the judge allows forced entry, the party against whom the order is granted may not be present.);

the party's/parties' legal representative(s).

In an ex parte proceeding, a party may request an order to freeze the assets of another party to prevent dissipation of the assets before conclusion of the proceedings (i.e., a “freezing order” or “freezing injunction”).

The grant of an ex parte injunction can be appealed.

Appeal of a decision for grant of an ex parte injunction cannot be expedited.

The denial of an ex parte injunction can be appealed.

Appeal of a decision for denial of an ex parte injunction cannot be expedited.

B. Interim Inter Partes Injunctions

Interim inter partes injunctions are not available to claimants seeking emergency relief.

In order to apply for an interim inter partes injunction, it is necessary to institute infringement proceedings at the same time.

The types of interim inter partes injunction available include:

prohibitory (to prohibit the defendant from performing certain acts);

mandatory (to require the defendant to perform certain acts);

The purpose of an interim inter partes injunction is:

to restrain further infringing activities until trial or a further hearing;

to prevent the consequences of an infringement or violation;

to obtain or preserve evidence;

to ensure the effectiveness of the eventual remedy;

to preserve the status quo;

to prevent irreparable injury;

The strategic benefits of obtaining an interim inter partes injunction include:

it may put an end to the infringement and litigation quickly;

it may save costs;

putting the defendant at a strategic disadvantage at the beginning of the case;

obtaining or preserving evidence;

ensuring the availability of the requested remedy;

ensuring the availability of compensation for damages;

getting an assessment of the merits by the court;

reducing potential damage caused by infringement;

The risks of seeking an interim inter partes injunction (if it is not granted) are:

increased costs of the proceedings;

prejudicial adverse determination;

resolution of potentially dispositive issues on an incomplete or not-well-developed record;

An interim inter partes injunction remains in place:

until a decision is made on the main proceedings.

until further order by the court.

The procedure for applying for an interim inter partes injunction includes the following:

motion, with notice to all parties;

supporting affidavits or declarations;

supporting documentary evidence;

responsive affidavits or declarations;

live presentation of evidence;

discovery;

order;

The factors considered in the granting of an interim inter partes injunction are:

inadequacy of damages as a remedy;

whether the status quo should be preserved;

The following forms of evidence are admissible in support of an interim inter partes injunction application:

oral testimony of witnesses;

documents;

affidavits;

samples of infringing product(s);

If the court later finds that the interim inter partes injunction was granted in error, the applicant will be required to:

The cost of obtaining an interim inter partes injunction, including attorney fees and court costs (but excluding the cost of a bond), is approximately:

between U.S. $10,000 and $50,000.

The costs of an interim inter partes injunction are recoverable as follows: After filing of a court action to claim demages.

It takes approximately the following length of time to obtain an interim inter partes injunction (counting from filing of the application to issuance of the injunction):

less than 10 days.

In an interim inter partes proceeding, a party may request an order to enter the premises of another party to search for property/documents/items that may become evidence (i.e., a “search order” or “search and seizure order”).

The following party or parties will be present at the inspection:

the judge(s);

the marshall, sheriff or other law enforcement officer;

the party/parties’ legal representative(s);

In an interim inter partes proceeding, a party may request an order to freeze the assets of another party to prevent dissipation of the assets before conclusion of the proceedings (i.e., a “freezing order” or “freezing injunction”).

The determination on an application for an interim inter partes injunction can be made into a final decision on the merits (i.e., an interim inter partes injunction can be made permanent).

The hearing on an interim inter partes injunction can be consolidated with the trial or final determination on the proceeding.

The grant of an interim inter partes injunction can always be appealed without waiting for final disposition of the case.

Further appeal of the grant of an interim inter partes injunction is always possible without waiting for final disposition of the case.

Appeal of a decision for grant of an interim inter partes injunction can be expedited.

The denial of an interim inter partes injunction can always be appealed without waiting for final disposition of the case.

Further appeal of the denial of an interim inter partes injunction is always possible without waiting for final disposition of the case.

Appeal of a decision denying an interim inter partes injunction can be expedited.

C. Standards for Obtaining Inter Partes and Ex Parte Injunctions

The standard for obtaining an interim inter partes injunction is the same as the standard for obtaining an ex parte injunction.

V. Early Resolution of Litigation

A. Interim Applications Available for Ending Proceedings Early 

A party can seek to end proceedings prior to trial or final determination by interim applications for:

res judicata and statute of limitations.

B. Summary Judgment

A party can conclude proceedings early by obtaining summary judgment in the following circumstances:

there are no material factual disputes;

there is no arguable case or defense (i.e., there is no reasonable prospect of the party succeeding in the proceedings);

Summary judgment can be requested by the following parties:

plaintiff;

defendant;

The applicant for summary judgment must:

make an application to the court;

file a written statement containing the appropriate facts, argument and legal support;

file supporting documents or other evidence;

obtain permission of the court;

file a statement of undisputed facts;

A ruling on a motion for summary judgment may always be appealed.

A summary judgment may be appealed on the following grounds:

the court improperly resolved disputes about material facts;

the court made an error of law;

new evidence is found after the issuance of summary judgment;

C. Trial of Preliminary Issue

Proceedings can be expedited through an early trial or hearing on a preliminary issue under the following circumstances: There is a risk of losing the witness testimony.

Trial or hearing of a preliminary issue can be requested by the following parties:

plaintiff;

defendant.

The applicant for trial or hearing of a preliminary issue must:

file a memorandum containing the appropriate facts, arguments and legal support.

For the court to grant a trial or hearing of a preliminary issue, the following conditions must be met:

the determination of the preliminary issue is likely to have a beneficial impact on the conduct of the proceedings.

VI. Evidence

A. Evidence

The following forms of evidence can be relied upon in support of a claim in this jurisdiction’s trademark infringement proceedings:

documentary evidence (including samples/photos of allegedly infringing items);

expert evidence;

oral testimony;

survey evidence (uncommon).

The following forms of evidence can be relied upon in defense of a claim in this jurisdiction’s trademark infringement proceedings:

documentary evidence;

expert evidence;

oral testimony;

survey evidence.

A claimant must present or give notice of any evidence on which it will rely at the commencement of the proceedings. The evidence that the claimant wishes to gather during the proceeding has to be listed on the complaint. Then, during the evidentiary stage, the parties have to gather the evidence listed in their briefs (complaint or answer thereof): the experts' reports, the answers of public and private offices, affidavits, witnesses' statements, etc.

A defendant must present or give notice of any evidence on which it will rely at the time of the initial response to the claim.

A party to the proceedings may obtain information that is within the possession or control of another party to the proceedings:

at the request of the tribunal;

at the request of the party.

VII. Trial/Oral Hearing

A. Trial/Oral Hearing

Evidence may be presented at the trial or oral hearing in the form of:

oral testimony of witnesses;

deposition;

documents;

surveys (uncommon);

physical objects;

expert testimony.

It is possible to introduce surveys in evidence for the following issues:

whether a mark is famous or well known;

genericness.

The use of survey evidence is subject to the following requirements: none.

The length of an average trial or final hearing in a civil action for trademark infringement is: none. This is a written proceeding.

The nature of the proceedings is:

adversarial, i.e., the proceedings are driven by the parties and their representatives (e.g., the litigants control and present evidence) and the decision maker plays a relatively passive role.

A trial or final hearing includes the following:

Not applicable. There are no trials or final hearings in trademark infringement proceedings.

Witnesses are examined by:

the judge;

the lawyers.

As part of trial preparation, the parties do the following:

nothing.

VIII. Judgment/Final Orders

A. Judgment/Final Orders

It takes approximately the following amount of time for a decision to be handed down after trial or final hearing: approximately a year. This term refers to the closing of the arguments, as there is no final hearing in our legal system for this kind of proceeding.

The decision may be appealed within the following time frame: five business days.

Appealing a decision is of right; no permission is needed.

There is only one court to which an initial appeal can be made, which is: the Federal Court of Appeal.

The appeal court reviews:

both the facts of the case and legal issues.

Further appeal is possible to the following court: Supreme Court (only in exceptional cases).

Further appeal is not granted as a matter of right; permission is required.

IX. Post-Judgment Matters

A. Post-Judgment Matters
A defendant has the following length of time to comply with an order issued in a judgment: immediately, or within a reasonable amount of time if cessation of use involves some actions by the defendant.
A judgment may be enforced by way of the following proceeding(s): sentence-enforcement proceeding.

X. Costs of Litigation

A. General

The types of costs that may be recovered by the prevailing party during/after legal proceedings include:
court fees;
bond or security for costs;
copying costs (for producing documents, in discovery, typically);
notary attestation;
translations.

A range for the all-inclusive cost of a typical action for trademark infringement from filing of the claim through trial is as follows:
between USD 20,000 and 50,000.

The successful party in a trademark infringement claim cannot expect to recover any of the attorney fees incurred (as distinguished from damages awarded).

B. Security for Costs
When initiating proceedings, a plaintiff may be required to provide security for any costs that may eventually be awarded against it only if the plaintiff does not have a domicile or properties in the country.
A defendant is not required to provide security for costs after proceedings are initiated.
Application for security for costs is made via the following procedure: deposit in the Judicial Bank or taking out insurance.

For the court to grant security for costs, the following conditions must be met:
the claimant is resident outside the jurisdiction.

An application for security for costs can be made at the following stage of the proceedings: before answering the complaint.

In granting security for costs, the court may make the following orders:
the amount of the security;
the manner in which the security must be given;
the time frame in which the security must be given.

An order for security for costs may be appealed under the following circumstances: The plaintiff may appeal the order for security for costs if it considers it not to be applicable or that the amount of the security is excessive. The defendant may appeal the order for security for costs if it considers that the amount of the security is not sufficient.

If security is ordered, it is customarily provided in the form of:
bond/payment to the court;
third-party guarantee.

XI. Remedies

A. Remedies 

The following monetary remedies are available for trademark infringement:
accounting of defendant’s profits and actual damages.

Actual damages are assessed using the following methods:
lost profits of plaintiff;
damages to plaintiff.

Where both damages and an accounting of profits are available and a party proves both, the party will receive both.
Determination of the type and amount of remedy is not part of the trial on liability and occurs only after a final judgment on liability has been made.

The following non-monetary remedies are available for trademark infringement:
injunctions;
delivery up of infringing labels, packaging or products;
destruction;
disposal;
removal or obliteration;
public dissemination of judgment;
recall of infringing products;
identification of supplier.

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