Patents, trade marks, copyright and designs in Argentina: overview
A guide to intellectual property law in Argentina. The Main IPRs Q&A gives an overview of the protection and enforcement of the following IPRs: patents, trade marks, registered designs, unregistered designs, copyright and confidential information.
To compare answers across multiple jurisdictions, visit the patents, trade marks and designs Country Q&A tool.
This Q&A is part of the multi-jurisdictional guide to IP law. For a full list of jurisdictional Q&As visit www.practicallaw.com/ip-mjg.
The following cannot be patented (Patent Law):
Scientific theories and mathematical methods.
Diagnostic and therapeutic methods applicable in the human body, and those related to animals.
Any kind of living matter or substance already existing in nature.
Biological and genetic material existing in nature.
Patent applications must be filed with the Patent Office of the National Institute of Industrial Property (Instituto Nacional de la Propiedad Industrial) (INPI) (www.inpi.gov.ar).
Once a patent application is filed, the following steps are taken:
The Patent Office makes a formal examination and publishes it within 18 months from the filing date. Within 60 days from publication, third parties can file observations and documentary evidence.
The applicant can request a substantive examination. If this is not done within three years from the filing date the application is considered abandoned.
If the application meets all formal and substantive requirements, the patent is granted.
If the Patent Office rejects the patent application, the applicant can file a petition for reconsideration with the Patent Office's Board. If this petition is rejected, the applicant can appeal the decision to the federal courts.
Once a patent is granted, it is not possible to request its cancellation before INPI. The validity of patents can only be challenged with the federal courts.
Patents can be challenged as invalid for:
inventive step (obviousness);
written description; and
Not otherwise complying with the provisions of the Patent Law.
Actions requesting the invalidity of a patent can only be filed by those with a legitimate interest (for example, a defendant can file a counterclaim requesting the nullity of a patent in an infringement action).
Patents can also be cancelled when either:
The patent-holder fails to pay the annual maintenance fee.
A compulsory licence is granted to a third party and that party does not make use of the invention within two years from the grant of the licence for causes attributable to the patent-holder.
The patent holder can bring a civil claim to obtain damages as compensation. Damages are assessed on the basis of the evidence submitted by the patent-holder, and take into account:
Profits obtained by the infringer.
Price erosion resulting from an infringer's presence in the market.
The value of a reasonable royalty.
There are no punitive damages in Argentina.
To apply for registration of a trade mark, the applicant must have a legitimate interest (Trade Mark Law No. 22362) (for example, have a bona fide intention to use the mark in commerce). To be granted registration, a trade mark must be a word or sign that is distinctive in relation to the particular products or services it identifies.
The Trade Mark Office of INPI registers trade marks in Argentina.
Once an application is filed:
The Trade Mark Office conducts an examination on formal grounds in about two months.
About two months after the application, the application is published in the Trade Mark Gazette.
There is a non-extendable period of 30 days after publication to file oppositions to the application (see Question 15).
The Trade Mark Office conducts an examination on substantive grounds in about 12 months.
If an application does not encounter any opposition or official objection, it is likely to be registered in about 15 months from the filing date (this is not an official time limit, but rather the amount of time that such applications usually take in practice).
If oppositions are encountered, they automatically block the prosecution of an application and can only be overcome by reaching a friendly settlement with the opponents, or proceeding with pre-trial mediation proceedings and afterwards litigation. Otherwise, the application is considered abandoned.
To be granted registration, a trade mark:
Must not be identical or confusingly similar to others already registered or applied for by third parties for the same or overlapping products or services.
Must not be generic, descriptive, deceptive or otherwise fall within the prohibitions of sections 2 and 3 of the Trade Mark Law.
As from the publication of trade mark applications in the Trade Mark Gazette, there is a non-extendable 30-day period for third parties to oppose them. Oppositions may be filed by anyone with a legitimate interest. This can be derived from not only a prior trade mark application or registration, but also prior use, notoriety, and so on.
A trade mark registration lasts for ten years from registration. It can be renewed indefinitely for the same period of time, provided it has been used within five years prior to the expiration date:
In the marketing of a product.
In the provision of a service.
As a trade name for carrying out an activity.
To bring an infringement action, the claimant must either:
Be the owner of a registered trade mark.
Have used the infringed mark during a period of time long enough to have an established clientele.
An infringement action can be brought in the following cases:
Counterfeiting or fraudulent imitation of a registered trade mark or trade name.
Use of a counterfeit or a fraudulently imitated registered trade mark or trade name, or one belonging to a third party without his consent.
Offer for sale or sale of a counterfeit or fraudulently imitated registered trade mark or trade name, or one belonging to a third party without his consent.
Offer for sale, sell or otherwise market products or services under a counterfeit or fraudulently imitated registered trade mark.
There are different actions against trade mark infringers that may vary depending on the nature of the infringement:
Pre-trial mediation proceedings.
Action on the merits to ensure the infringer ceases to use the trade mark and to obtain damages.
Precautionary measures to obtain the attachment and seizure of infringing products under sections 38 and 39 of the Trade Mark Law
Injunctions based on section 50 of the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights 1994.
Works are recorded with the National Register of Intellectual Property (Dirección Nacional de Derecho de Autor) (DNDA). Its website (www.jus.gob.ar/derecho-de-autor.aspx) contains all the necessary forms to comply with the different forms of protection available. Deposit with the DNDA grants:
A property right in the work.
A rebuttable presumption of authorship.
A definite creation date for the work.
Copyright protection lasts for the lifetime of the author, plus 70 years from 1 January of the year following the authors' death. There are specific periods of protection for certain works (Copyright Law No. 11723).
On expiration of copyright protection, works enter into the public domain. Therefore, they can be freely used, but incur fees payable to the National Arts Fund (Fondo Nacional de las Artes).
A copyright owner can bring a claim to:
Prevent the work being exploited without his authorisation.
Obtain an award for damages if the work is exploited without his authorisation.
Obtain a penal sanction against the infringer (ranging from fines to prison sentences of one month to six years' duration).
The defences to copyright infringement actions are:
Fair dealing or use, such as use for:
didactic or scientific purposes;
comments, criticisms or notes referring to intellectual works. This includes up to 1,000 words for literary or scientific works, or eight bars in musical works and, in all cases, only the parts of the text essential for the purpose.
That the work is not protected, that the work is not copyrightable or that the copyright is invalid.
The following civil remedies are available:
Remedies for torts under the Civil Code (for example, damages).
Remedies under the Copyright Law, including:
a special procedure for cases involving copyright infringement and civil litigation related to contracts or transactions concerning copyright matters;
injunctive relief, such as the suspension of the infringing work or exhibitions; the attachment of the infringing works and the proceeds derived from infringing exhibitions or works; any other measure that may help protect copyright; and registered designs.
Industrial models or design registrations are granted to protect the appearance or shape of an industrial product, which provide it with an ornamental character. Functional designs, however, are not considered to be industrial designs. A single registration can cover up to 50 different examples of a single model or design, provided they are of the same kind.
Registered design applications are also filed with the Patent Office (see Question 1). The Patent Office only examines whether the application complies with formal requirements, and does not perform a substantive examination.
The most frequent defences in registered design infringement lawsuits are:
Existence of a legitimate right.
Nullity of the design, because the registered design does not comply with the legal requirements to be considered an industrial design.
The defendant can also file preliminary objections before the courts.
It is possible to obtain damages for infringements of registered designs (see Question 9).
Information is regarded as confidential when all of the following apply:
It is secret.
It has a commercial value for being secret.
Reasonable efforts and security measures were taken to keep the information secret.
Confidential information is protected against "unfair commercial use", including use as are result of:
Breach of contract.
Abuse of trust.
A third party acting to acquire non-disclosed information where that third party knew (or was grossly negligent in not knowing) that the acquisition was contrary to the law.
It is possible to obtain damages for breach of confidential information (see Question 9).
The regulatory authorities
National Institute of Industrial Property (Instituto Nacional de la Propiedad Industrial) (INPI)
Main areas of responsibility. Registration of patents, trade marks and designs.
National Register of Intellectual Property (Dirección Nacional de la Propiedad Industrial)
Main areas of responsibility. Registration of copyrightable work.
Guidance on application procedure. See Question 23. Guidance is available on the website.