Trade Dress Protection in Argentina
By Moeller IP Advisors
Trade Dress protection is a phenomenon relatively new to the South American legal panorama.
The concept of trade dress includes all the visual elements used to promote a specific service or product: the packaging, its shape, the color schemes, the interior design of a shop or even its architectural structure. In Argentina, comprehensive trade dress protection is not provided by Trademark Law: while no mention is made in the law to the concept of trade dress itself, section 1 of the law 22.362 admits the protection via trademark of packages. However, section 2 letter c of the same law, expressly excludes the form of a product from being trademarked.
The Argentine Case Law on Trade Dress
Argentine Courts, however, acting very much in line with other South American Courts, have deemed the form of the product as worth of legal protection and extended de facto the trademarkability of trade dress.
In 2006, in a case that has become pivotal for trademark law, Pfizer Inc. brought a lawsuit against the Argentine company Microsules y Bernabó SA, on the basis that one of the Microsules’ product was too similar in shape and color to their own product, the well-known erectile dysfunction pill branded Viagra. Microsules objected that Argentine trademark law did not consider the shape of products and their unique colours as trademarks. In a very innovative and groundbreaking decision, the Federal Court of Appeals on Civil and Commercial matters ruled in favour of Pfizer, stating that the particular combination of a shape and colour used for the Viagra pill was original and worthy of protection. Furthermore, the court established that Microsules had practised unfair competitive behaviour by marketing a medicine with the same therapeutic effect with the same shape and colour.
How to register a Trade Dress
Provided that it complies with the requirements established by the law or the case law, any trade dress can be registered as a trademark at the INPI Argentina. It takes approximately 18 months to obtain a trademark registration if no parties oppose the application. The trademark protection lasts for 10 years from the granting date.
The application can be filed online, via the official website of INPI; in person at the offices of INPI or through mail by sending all the necessary documents to INPI. After the application, INPI performs a formal examination of the application and documents submitted; the Trademark application is then published in the Official Gazette. After publication, there are 30 calendar days for third parties to oppose the trademark application on the basis of an infringement of their own rights.
Alternative trade dress protection modalities
Alternatively, the trade dress can be protected as an industrial model if it fits the requirements set by Decree 6673/63. An industrial model is a three-dimensional shape of an object and can be registered if novel, original and if it provides an ornamental character for the product. The protection lasts for five years from the date of filing, renewable for two additional terms of five years. Although it lasts less, the protection given to industrial models is somehow stronger: while the trademark owner can oppose registration only in the same or in a related class, the industrial model owner can prevent others from exploiting the design, no matter which sector they operate in.