Introduction
Registration of Non-traditional Signs
Scent Trademarks


Introduction

The Trademark Law (22,362) protects both product and service marks. In contrast to US trademark law, which permits ownership resulting from public use rather than registration, under Argentine law the ownership of a trademark and the right to the exclusive use thereof are acquired by registration in accordance with Section 4 of the Trademark Law. Consequently, if the trademark is not registered, there is no exclusive right thereto.

Notwithstanding the adoption of this attributive system, legislation and court decisions have granted special protection to well-known trademarks which have not been previously registered in Argentina.

A trademark consists in any distinctive sign, symbol or device that a manufacturer affixes to the products that it produces or that is used in connection with services rendered, with the purpose of identifying such products or services in the market. Whether a trademark qualifies for trademark protection depends on its distinctive capability. Before registration, the trademark is subject to a Trademark Office examination.

Registration of Non-traditional Signs

Traditionally, signs that are formed of words with or without conceptual meaning and figures are usually afforded the most protection under trademark laws. So-called 'non-traditional' signs are not those signs that are visually perceptible only (eg, signs based on words, letters, numbers, logos or drawings), but rather originate from and are related to forms, colours and movements. Non-traditional marks are also perceptible through other senses (eg, touch, taste, hearing and smell).

Scent Trademarks

One example of a non-traditional sign that is perceptible through another sense is a scent trademark (eg, a certain fragrance, smell or scent). If a certain product provides the container thereof with a distinctive scent, the party marketing that product will logically try to obtain the exclusive right to that scent. The appropriate way to obtain such exclusivity is by registering the scent as a trademark. The Trademark Law does not expressly refer to the registration of scent trademarks. However, since the law adopts wide criteria when referring to possible distinctive signs, many juridical authors support the registration of scent marks.

On January 30 2009 the National Institute of Industrial Property (INPI) registered its first scent trademark to be applied to the container of a product in Argentina. The trademarks are registered as 2.115.161 to 2.115.166 and issued as Numbers 2.270.653 to 2.270.657, respectively. They are owned by L'Oreal and registered in International Class 3.

The registrations were granted by Resolution 131/09. In all cases the scents comprised a "Fragrance of…[different fruits in each case]… applied to the Containers". If the fragrances had been applied to the product rather than to the container, the INPI's criteria would surely have been different, since in certain cases the application of the fragrance to the product itself (eg, strawberry, raspberry and peach scents) would have beeen objected to by those parties that manufacture such products in the public domain.

L'Oreal's applications for the scent trademark registrations date back many years, following a third-party opposition when they were first published. When legal action was brought for the withdrawal of such opposition, the court emphasized that in order to determine the registration of a sign, it is not a "substantial requirement" under Argentine trademark legislation that such sign be "visually perceptible" or "graphically represented". Subsequently, the intervening court notified the INPI about the withdrawal of the third-party opposition.

Consequently, the final decision to deny or grant registration of the trademarks in question fell to the application authority (ie, the INPI). By means of a brief report, the INPI evaluated the marks' intrinsic and extrinsic distinctive capacity (compared to other identical or similar signs in the same class), and reached the above conclusion, permitting registration of the scent trademarks.

It is important to highlight the criteria adopted by the INPI when it originally accepted the registration applications and ordered the corresponding publications and now proceeds to grant such non-traditional trademarks without demanding that they fulfil impossible requirements (eg, graphic representation or visual perception).

For further information on this topic please contact Juan Martín Aulmann or Daniel R Zuccherino at Obligado & Cia by telephone (+54 11 4114 1100), fax (+54 11 4311 5675) or email ([email protected] or [email protected]).