Argentina

Comparative Advertisement: Prohibited or not?

Opinion by Noelia Cueva

What is Comparative Advertisement?

Do you know what comparative advertising is? As long as commerce has existed, advertisement has been a necessary companion of all traders and companies to spotlight their products in the market.

Over time a key element of product strategy has been to compare what product A offers (for similar use, feature and / or application) with what product B provides, highlighting by contrast the benefits of a trademark and usually called Comparative advertisement.

It is prohibited or not?

In Argentina, comparative advertisement is permitted, as long as no third party rights are infringed and no confusion is generated for consumers.

It is important to note that comparative advertising is not regulated by one rule in Argentina.  On the contrary,it is regulated by a plurality of rules that must be taken into consideration in order to avoid potential claims by competitors.

Comparative advertisement conflicts 

But what kind of claims or conflicts can develop in using comparative advertisement as a marketing strategy? The conflict can stem from the veracity of the message transmitted to consumers or the denigration or discredit of competitors’s products and trademarks.

This means that when the comparison is made using false or unconfirmed information, it could be considered as misleading advertising. This situation violates not only the consumer´s rights but also the competitor’s rights.

In conclusion, to avoid future claims for comparative advertising, we recommend seeking legal advice on such matters.

Exploring license agreement registration

By Mariano Tabanera

The registration of license agreements before Industrial Property Offices has different effects around the world. In many countries, this registration is required in order to grant the agreement of effectiveness against third parties. In order to prove the use of a trademark in a cancellation action by a local distributor, the agreement must be registered.

In Argentina, this registration, however, is not required in order to prove the existence of the agreement. Of course, it does give a date as of which we can be sure that said agreement was valid and in full effect, but this is not required.

What is the advantage of registering a license agreement before the IP Office, then? Is it really worth going through a procedure such as the registration?It is, at least from a purely economic point of view. The Argentinian law grants the registrant of a license agreement a significant tax exemption. Article 93 of the local Income Tax Law foresees an exemption of either 60 or 80% of what is paid for said tax, depending on what is licensed. This can be a considerable amount.

Below, a short list of what can be registered, as the law has some limitations:

• Only agreements regarding technical assistance, know-how, or Industrial Property rights (Trademarks, Patents, Industrial Models or Designs) licensing can be registered;
• Agreements for the acquisition of products or software license are excluded from registration;
• The agreements must include a consideration from the licensee. Gratuitous licenses are not registrable.

If the agreement complies with these requirements, it can be registered before the IP Office, which will issue the corresponding tax exemption certificate.

Consequently, in a country where the tax pressure is as high as in Argentina, it is recommendable to register these agreements, in order to diminish the tax burden and make the local operation more profitable, for both parties.

Can makeup have a copyright?

By María Sol Porro

Since the law 11,723 was enacted in 1933 different human expressions were included in its art, meaning humans expressions were included in this law to be protected. So what happened with makeup?

The law defines that some makeup is considered protectable work, while other makeup is an expression, excluded for various reasons: a transitory nature, lack of originality, lack of independence from another work, etc.

Makeup is a very good example of one of these conflicting expressions. While for many the line of the eye may be the great nightmare of makeup, some makeup artists create works of art worthy of a museum.

Recently, the Argentine Courts regarding a conflict between a makeup artist, the plaintiff and the director of a magazine, the defendant discussed this issue. The plaintiff filed the lawsuit against the defendant because she was hired to do makeup for models in a production for the magazine N.  Afterwards, she was invited to a parade organized by the defendant and saw catalogs, which included photos wherein it was indicated that the makeup was done made by a third person, not the plaintiff.

The claim was initially rejected with the argument that since the make-up captured in the photographs was not a work but only an idea, it did not deserve protection because ideas do not enjoy legal protection. However, the Civil Appeals Chamber revoked the judgment of first instance in favor of the plaintiff stating that the defendant had caused damage to the plaintiff when using the photos with a different purpose to the original one for which they had been produced (patrimonial right) and the lack of consignation of the plaintiff’s name as executor of the realized makeup (moral right).

Although in this case the Civil Appeals Chamber did not resolve the case, directly applying the regulations related to copyright, if it indirectly recognized the moral and patrimonial right of the makeup artist to rule in favor of it.

For this reason, I wonder if makeup is an artistic expression that deserves to be protected.  Nevertheless, if the purpose is merely practical, does it not deserve it? Where is the border? In my opinion, just as in fashion, basic makeup is something too utilitarian or practical to have copyrights. However, some makeup may be protected if they are considered works of art separable, at least conceptually, from the face or the body itself.

SOURCE: Judicial resolution “Expte. N° 93.864/2011. “M., M. d. C. c/ H., A. R. s/ daños y perjuicios”. Juzgado N° 28.-”

Changes to IP Laws

By Moeller IP Advisors

On January 11, 2018, Presidential Decree No. 27/2018, which introduces many amendments were made to the Argentinian Trademarks, Patents and Industrial Designs Laws, was published in the Argentinian Official Gazette (Link to the official publication: https://www.boletinoficial.gob.ar/#!DetalleNorma/177429/20180111).

The main modifications are in connection to the following:

Trademarks:

• Trademark opposition procedures: these no longer depend on the parties’ negotiation. Three months are given as of the notification of the opposition to negotiate between the parties. In case the opposition is not withdrawn, the Trademark Office will study the case and issue a resolution.
• Nullity actions are solved by the Trademarks Office, and not a Court of Justice.
• Cancellation actions for non-use are solved by the Trademarks Office and not by a Court of Justice. Trademarks can be partially cancelled.
• Use requirements: A declaration of use must be filed before the Trademarks Office between the 5th and the 6th year of the registration.

Patents:

• Reduction of terms: Terms for filing documents, paying examination fees, conversion of patents into utility models and answering official actions are considerably reduced with the purpose of expediting the procedure.
• Priority document: it will not be necessary to submit this document when filing the application. However, the examiner may request this document during the substantive examination stage.

Utility Models:

• Change of registration procedure: Upon payment of the examination fee (within three months as from the filing date), the Patent Office will conduct the substantive examination. After that, the application will be published. If no third parties observations are filed within a 30-day term, the application will be granted.
• Reduction of terms: Terms for filing documents, paying examination fees, conversion of utility models into patents and answering official actions are considerably reduced with the purpose of expediting the procedure.

Industrial Designs:

• Protection of craft products.
• Multi-filing: A single application may include up to 20 industrial models or designs as long as they are included under the same class of the Locarno Agreement.
• New technological ways for presenting drawings: Drawings, photographs, digital reproductions.
• Section 14 related to the Paris Convention priority right was revoked.
• Publication of granting decision can be suspended.
• Renewal term: The application for renewal can be filed within six months before the expiring date. A six-month grace period is granted for filing the renewal upon payment of an additional fee.

On January 17, 2018, the Argentine Association of IP Agents (AAAPI) met with the Argentine PTO (INPI)’s authorities to discuss the implications of Presidential Decree No. 27/2018, how it is to be interpreted and which actions shall be taken in this regard in the near future.

At the beginning of the meeting, the AAAPI was informed that the INPI had issued resolution No. 001/2018, indicating how the terms would be calculated once the Decree comes into effect, which terms would be applied (the shorter ones would be applied) and detailing which norms of the Decree shall be immediately functioning (indicated in an Annex I) and which would require to be implemented (Annex 2). The annexes have not been provided yet.

The AAAPI was also informed that they would be consulted for the drafting of the regulations to be implemented by the Decree. Furthermore, it was stated that the INPI shall count on the human and economic resources to be in charge of the new tasks and proceedings entrusted by the Decree.

Please find below the most important aspects evaluated in the meeting:

TRADEMARKS:

• The most controversial issue is the interpretation of the new Article 16 (resolution of oppositions). According to the INPI´s understanding, it is immediately in force and the term of three months started to be applicable and to run as from the date in which the Decree became effective.According to the INPI´s idea, if the annual term expires, for example, on February 15, 2018, said annual term shall be applied, and if the term expires, for example, on May 15, 2018, the deadline shall be based on the 3 months established by the Decree, which expires on April 12, 2018.The lawsuits that were filed before the Decree became effective shall be submitted to the Court of Justice. They will receive the lawsuits filed after the Decree became effective but they will not submit them to the Court of Justice, until the course of action is decided by regular means.The AAAPI strongly criticized this interpretation and requested it to be reviewed. The INPI said that they would consider the AAAPI´s observations and see how they would proceed.Anyway, it must be taken into account that the expiration of the quarterly term of the new Article 16 without having obtained the removal of the oppositions, does not mean that the trademark shall be automatically cancelled, but on the other hand, it gives the authority to the INPI to decide on the remaining oppositions. Furthermore, the AAAPI understands that agreements with removal of oppositions can be filed after the expiration of the quarterly term and provided INPI had not yet decided the matter.

• For now, the “T” (toda la clase – Spanish for “all the class”) will be allowed. It is possible that some time ahead the TM Office might request the list of products or services, though apparently the class heading will be accepted Article 10. The text of the new Article 10 was created for an eventual multiclass application.
• Oppositions as paper submissions will still be accepted (Article 14). It is understood that the INPI will issue an explanatory note on this matter. During the meeting, the INPI’s authorities declared that ultimately, the right of filing on paper arises from the constitutional right to file requests with the authorities.
• The new Article 18 (INPI’s view of a case submitted to Court) only has the purpose of confirming if and how the application was decided.
• The current practice related to renewals will continue without amendments. In fact, Article 20 was not modified by the Decree.
• The INPI does not contemplate to declare cancellation ex officio (Article 26). Partial cancellation shall be regulated in order for same not to be retroactive.

PATENTS AND UTILITY MODELS

• The written application shall not be mandatory any more (Article 12), in order to start with the electronic signature.
• The term of 90 days as from the filing date for adding priority and assignment documents plus a translation thereof, will not be mandatory, but this material can be requested during the substantive examination (Article 14), for which a term of 30 days shall be stipulated (this term could be possibly extended to 90 in light of the AAPI´s claims).This “extended” filing shall not be applied to trademarks or industrial designs.
• As in trademarks, the power of attorney will not be necessary and it shall be sufficient to invoke the capacity of proxy-holder. Now if the application is filed without holding a proxy from the applicant, a copy of the Power of Attorney shall have to be added once it is obtained.
• The term to request the substantive examination of 3 years is reduced to 18 months (Article 27). For the terms in progress, the once expiring first shall be the one applicable, counting Decree´s as from the date of entry into force. For instance, if the 3 year-term expires on December 22, 2018, said deadline shall be applied, but if same expires on December 22, 2019, then the Decree´s deadline of 18 months shall be applicable (which would have started running on January 12, 2018 and would expire on July 12, 2019).
• A quick (accelerated) process for utility models will be applied, with the following characteristics:
• A time period of only 3 months to request the substantive examination.
• It is to be published after the substantive examination is overcome.
• If same is rejected, there will be no publication.
• As there are few cases, it is possible that the INPI requests the payment of the examination.
• The new Article 67 eliminates the need for the applicant’s signature or legal representative thereof.

INDUSTRIAL DESIGNS

• In the definition of what can be protected, the “craft” articles were added (“the shapes and/or aspects applied to an industrial or craft product, granting an ornamental nature thereto” (Article 3).
• The list of facts not destroying novelty has been broadened (disclosure made within 6 months before the application or priority by the author, or by an illicit act by a third party, or a mistaken publication from the INPI)  (Article 6).
• Multiple applications will be accepted: up to 20 designs, provided all belong to the same class. Applications can be divided if the designs belong to different classes (Article 9). The option of 20 designs in one application will possibly avoid many office actions.
• Pictures (photos) shall be accepted and the description will be optative (Article 10).
• Renewal will be filed within the last 6 months, and within the 6 months after the expiration of the design, the “reinstatement”  can be requested (Article 11). The INPI considers the first part already operative (renewal, though it still receives renewals filed between 6 and 9 months before the expiration), but not the second part (“reinstatement”), since a tariff has not yet been set for the latter.
• The administrative stage must be concluded (statement with INPI) before filing an appeal against the refusal with the Federal Courts (Article 12).
• Upon applicant’s request in the application, the publication of the design can be extended for 6 months (Article 16).
• The inclusion of the criminal regulation in the Decree would refer only to the update of the penalties (Article 21).

Source: http://aaapi.org.ar

Moeller attorneys hold IP Lectures

By María Sol Porro

During last October talks corresponding to the “Legal Café” of the Attorneys of the Federal Public Bar Association of Capital City – Buenos Aires(CPACF), Moeller IP attorneys, Noelia Cueva and María Sol Porro presented various topics regarding Intellectual Property.

The corresponding conferences, which took place every Tuesday in October, addressed the following topics:

• I: General Matters of Intellectual Property: Trademarks, Patents and Utility Models, Models / Industrial Designs, Domains and Copyright
• II: Trademarks
• III: Domains
• IV: Copyright
• V: Patents and Utility Models – Models / Industrial Designs

The majority of those attending were lawyers without basic knowledge of IP matters specializing in other branches of law. Other participants included accountants, designers and other experts in their fields.

Due to positive response of the participants, the aforementioned attorneys were asked to repeat the series again next year in 2018.

Source: http://www.cpacf.org.ar

Omeprazol ILAB and Mila Marzi make-up products out of the market

By Noelia Cueva

The National Administration of Medicines, Food and Medical Technology (ANMAT), has recently detected and prohibited the commercialization and use of four make-up items from Mila Marzi´sline and Omeprazol medicine from the Immunolab laboratory.

The official statement indicated that the products involved in Mila Marzi´s line – black eyes, lip gloss, lip moisturizer and rouges – do not have registration data of the product before ANMAT.

On the other hand, according to ANMAT, the Inmunolab firm was not only commercializing “Omeprazol ILAB, rigid capsules, Certificate No. 43.165” products without the corresponding marketing authorization required by ANMAT Regulation No. 5743/2009, but also was developing activities for which it was not qualified.

It is important to highlight that it is mandatory for each product on the market to contain the registration date of the product before ANMAT. If this information is not detailed on the label or packaging of the product it is not a product duly allowed by ANMAT.

ANMAT has a strong commitment to safeguard and protect human health, ensuring that medicines, food and medical devices are available to citizens and not harmful.

Source: http://www.lanacion.com.ar/

To increase or not to increase? – The question has been answered

By Moeller IP Advisors

Update July 20, 2017

Further to our previous post in June 2017 about this matter, on July 18, 2017, the Office of the President of Argentina published in the Official Bulletin Resolution 311-E / 2017, the planned increase of official fees for intellectual property. The official fee increase will occur in two steps.  The first phase will go into effect on August 1, 2017. The second phase will go into effect on October 1, 2017.

If you would like to know exact price increase, we are currently preparing an English translation of the Resolution Annex (Table IF-2017-14791841-APN-MP).  Please send an e-mail to tara.nicoll@moellerip.com.

On the same date a second resolution, Resolution 202/2017 was published. The second resolution refers to the creation and opening of the Department Registry of Transfer of Rights of the Directorate of Technology Transfer for the processing of requests for transfers and changes of ownership on patent and utility model applications, whether these are pending or granted.

If you would like a copy of the official bulletins, (Spanish only) please send an e-mail to tara.nicoll@moellerip.com.

For further updates, please do not hesitate to contact us.

Source: Resolutions 311-E / 2017 and 202/2017 issued by the Office of the President of Argentina

A special U.S. issued report explores Argentine IP field

By Noelia Cueva

In June, the United States Trade Representative´s Office (USTR) issued an official report entitled “Special 301 Report,” which highlighted the different problems that both U.S. Government and companies experience in several countries, including Argentina.

In this regard, the USTR not only questioned resolution 283/2015 issued by the Argentine National Institute of Industrial Property (INPI) – which introduced changes in the patenting guidelines– but also made a special reference to the limitations in patent technological innovations based on living matter and substances.The project “Special 301 Report” was aimed at amending the Seed and Phytogenetic Plant Breeding Law (Law 20.247), brought to Congress by the Argentine Government, was also criticized by USTR.

The Seeds Law, which dates from 1973, contemplates that the producer can do without limitation to the private use, the figure that allows him to keep as seed part of the crop in order to return it to sow.

As Law 20.247 does not take into consideration the new productive realities, the Argentine Government’s proposal states that large producers would have to pay additional sums for three campaigns following the purchase (in terms of intellectual property) if they maintain the same crop area. Should a fourth campaign take place, they would be exempt from payment if they have not expanded the number of cultivated hectares.

Despite the Argentine government’s well-intentioned project to balance the rights of producers and patent owners, the USTR believes that they may adversely affect the recognition of intellectual property rights. Nonetheless, the USTR expects tangible results, creating a more attractive environment for investment and innovation.

Source: http://www.lanacion.com.ar