Recovery action for intangible property
The new Civil and Commercial Code includes a series of rules referring, directly or indirectly, to intellectual and industrial property matters (for further information please see "Intellectual property under new Civil and Commercial Code" and "New Civil and Commercial Code and industrial property rights").
Among the rules that directly concern 'intellectual property' (this term being used in a broad sense, encompassing intellectual as well as industrial property), the new code includes rules referring to:
- image rights;
- the names of legal entities;
- the marital community regulation; and
- a series of regulations regarding intellectual and industrial property and franchise, concession and leasing agreements.
The new code's rules regarding comparative advertising are also noteworthy (for further information please see "Comparative advertising under new Civil and Commercial Code").
Recovery of intangible property rights
The new Civil and Commercial Code also has a significant impact on the recovery of intangible property rights.
The aim of the action for recovery is to:
- allow the owner of a trademark that has been registered by a third party in bad faith to place itself in the same position as the first registrant and exercise the exclusivity rights arising from said registration; and
- return the trademark to its lawful owner.
Section 11 of the Trademark Law (22,362) mentions the recovery of intangible property rights, but does not set out how this can be achieved in practice. In the context of the recovery of other intangible property rights, such as industrial models and designs, the final paragraph of Section 1 of Decree Law 6673/1963 states that "the author of an industrial model or design and his lawful successors have an action for recovery of the ownership of a registration made with malice by a party that was not its author". Similarly, Section 31 of the Patent Law establishes the setting that enables the exercise of the action for recovery, which states that "the granting of the patent shall be done with no prejudice to a third party with a better right than that of the applicant, and with no guarantee from the State concerning the usefulness of its object".
Until the new Civil and Commercial Code came into force on August 1 2015, courts accepted suits relating to the recovery of trademarks based on a broad interpretation of Section 11 of the Trademark Law, which sets out that the special domicile established by foreign applicants is valid for the notification of an action to recover intangible property rights, among others.
However, Section 16 of the new code regarding goods does not mention intangible property rights and Section 2253 expressly excludes intangible property rights from protection via a recovery action. Considering the Civil and Commercial Code's new rules, the question is how case law relating to the recovery of intangible property rights – which courts have accepted based on a broad interpretation of Section 11 of the Trademark Law – will evolve.
For further information on this topic please contact Daniel R Zuccherino at Obligado & Cia by telephone (+54 11 4114 1100) or email ([email protected]). The Obligado & Cia website can be accessed at www.obligado.com.