Overview of the Argentinean Intellectual Property System
1. International Treaties governing IP law
Argentina is a member of the following IP Treaties, which prevail over local laws according to the Argentinean National Constitution:
Paris Convention for the Protection of Industrial Property (1883);
Berne Convention for the Protection of Literary and Artistic Work (1886);
Rome Convention for the Protection of Performers, Producers of Phonograms and Broadcasting Organizations (1961);
TRIPs, Trade-Related aspects of Intellectual Property Rights, (1995);
WIPO Copyright Treaty (1996);
WIPO Performances and Phonograms Treaty (1996);
UPOV (International Convention for the Protection of New Varieties of Plants Protection, as its version of 1978),
Argentina is not a member of the Patent Cooperation Treaty (PCT),
Argentina is not a member of the Madrid System to file Trademarks.
Argentina has not formally adhered to the Uniform Dispute Resolution Policy issued by ICANN and administered by WIPO in order to set disputes over local (ccTLDs) domain names.
2. Trademarks, Geographical Indications and Industrial Designs
In general terms, Argentine trademark law and practice has been one of the most advanced in Latinamerica and considered similar to those of most European systems.
Almost any sign having distinctive power can be registered as a trademark including sounds, wrappings, packaging, advertising slogans, etc.
The time consumed to register a trademark is usually less than two years from the filing date, as long as no opposition is lodged by a third party. An address within the city of Buenos Aires must be provided, which usually is the one of the agent handling the filing. The classification of goods and services used by the Trademark Office is the Nice Classification Agreement.
A registered trademark confers certain rights nationwide for 10 years. It can be unlimited renewed if the trademark has been used within the last 5 years prior to its expiration. Among the rights conferred it is worth noting: criminal protection against infringers, civil actions to cease in the use of a trademark and/or to recover damages; recordal at the local Customs (“Alert System”); require “ex parte” and “inter parte” preliminary injunctions to stop infringing activities or to secure elements to be used at trial, etc.
Well-known and famous marks are enforced in greater extension and subject to less formal requirements in order to be recognized and protected in our country.
Local legislation to protect Geographical Indications and Denominations of Origin is almost already fully implemented (certainly this happens regarding wines and spirits) although there are still many issues like the coexistence between registered trademarks and GI that will need further clarification –despite article 25 of the ADPIC agreement for wines and spirits-
Industrial Designs are granted over ornamental improvements of industrial product, when complying with the requisite of novelty, for 5 years from the filing date, which can be extended twice at the request of the title-holder. The main advantage of this instrument over a trademark is that the registration process is less time consuming given that only its deposit is required so, besides the fulfillment of formal requirements, no major examination is conducted. However, there are some restrictions over their registrability and enforcement that should be considered.
3. Patents and Utility Models
Patents confer certain rights to exclude others from using, making, selling, offering to sale and importing a patented invention subject to limited exceptions such as use for research (non commercial) purposes and international exhaustion of rights.
Although it has been discussed whether Argentina has already fully implemented the minimum standards established at TRIPs, broadly speaking the local patent system follows many of the trends seen in Europe, particularly regarding the exclusion of certain subject matter from patentability in areas like biotechnology, “business methods” and the like.
In Argentina, plants (that are protected through the breeder rights), animals and genetic material existing in nature, as well as mere pieces of software (that are protected by copyrights) are all subject matter that, in principle, are excluded from patentability. Yet it is advisable to consult with a local expert in order to confirm that a particular exclusion applies.
One of the main current problems is the backlog of applications pending of substantive examination (especially in the fields of pharmaceuticals and biotechnology), which extends the period for the issuance of the patent up to 6-8 years. Therefore, the time to enjoy legal protection is shortened almost a third given that neither other legal protection is available (like provisional rights covering from the publication of the application up to the granting date against certain third parties that knew were infringing the patent rights).
Another hot issue has been the availability of fast and efficient legal actions to enforce patent rights, which comply with TRIPs (art 50 and others). Thus, during 2008 there has been case law addressing the issue of whether the requirements to grant “ex parte” preliminary injunctions incorporated by the amendment of the Patent Law in 2003 were constitutional or not. Some chambers at the Federal Civil and Commercial Courts of Appeals in Buenos Aires have decided that, in principle, in order for “ex parte” preliminary injunctions to be granted a neutral expert must be appointed by the court to inform about I) whether there is a reasonable probability that the patent of the plaintiff, in case of being challenge by the defendant, may be declared invalid and ii) whether it has been proved that any delay in the grant of those measures derived in an irreparable damage on the owner of the patent.
Argentine patent law provides with particular criminal and civil actions to enforce patent rights and also sets forth compulsory licenses in certain cases such as when a patent has not been worked or any preliminary, effective and serious acts have been made in order to exploit the patent invention, except force majeure, within 3 years since the date it was granted or within 4 years since its filing date or even when the exploitation of it has been interrupted during 1 year; as well as to stop the effect of anticompetitive conducts (however no compulsory license has been granted up to date).
Utility models (also called “little patents”) are granted for 10 years from the filing date over new arrangements or shapes obtained or introduced in known objects for improving their use or their functionability.
The administrative procedure to prosecute their application is almost equal to that of patents, which means high complexity and costs. Therefore, the number of utility model being filed has recently diminished.
4. Transfer of Technology (registration of licensing contracts for tax purposes)
The registration of contracts establishing licenses of trademarks, patents and other industrial rights as well as transferring technology confers very important benefits in regard to the taxation of royalties paid to foreign right holders.
Said registration is subject to an official fee of 2% over the whole economic value of the contract and currently demands at least 3 months until a tax certificate is issued.
It should be noted that Argentina has entered into Bilateral Treaties to Avoid the Double Application of Income Tax with more than 15 countries including Switzerland, Germany, Austria and Spain among others, which affords even greater tax benefits if said contracts are registered with the local Trademark and Patent Office (INPI). Another benefit derived from registering said contracts (or any other such as assignments or security interest) is that once they registered then are enforceable against third parties.
5. Copyrights or authorial and related rights
They protect intellectual creations in the following areas: literary, scientific and artistic, software and layout designs of integrated circuits as well as the rights of performers, interpreters, producers of phonograms and broadcasting organizations.
Authorial rights lapse after certain number of years depending on the particular area, being the general copyright term for life extended for 70 years as from the first of January of the year following the death of the author. Registration is not required for purposes of recognizing the particular rights but it is advisable to do so, which is not expensive, as to enforcing them in the most efficient and effective way, as well as to constitute proof in the country, avoid the suspension of patrimonial rights, etc.
Yet, certain activities of third parties are considered as non-infringing including those having academic, experimental for citing purposes and following the requirements established by law.
Since April 2007 a system to record trademarks at the Local Customs has entered in force allowing its owners to be informed of any import/export of goods declaring the use of the corresponding mark, authoral or related rights.
Upon the recordal of the trademark within the “Alert System” (handled by the local Custom), digital notifications on the movement of goods across the borders are delivered so that the trademark owner can exercise he or her right of conducting a physical examination of the goods before they are released.
It is worth noting that in almost all cases, when fake products are detected same are abandoned so that most of the legal costs involved in large actions are ultimately avoided.
This system certainly gives trademark owners the possibility of exercising greater control over the different contractual obligations set forth in the agreements with the local parties commercializing products and services in Argentina (parallel imports are, however, allowed by local law).
Notes: Authors: Estela De Luca and Mariano Municoy, IP Lawyers at Moeller & Co.