Trademark infringement lawsuits in Argentina fall within the federal courts. Both civil and commercial actions can be filed by the trademark owner.i Forums
Since 18 September 2018, with the entry into force of Decree No. 27/2018 and INPI Resolution No. P-183/18, pretrial mediation is optional for parties.ii Pre-action conduct
Since 18 September 2018, with the entry into force of Decree No. 27/2018 and INPI Resolution No. P-183/18, pretrial mediation is optional for parties.iii Causes of action
Article 4 of the Trademark Law states that the 'property of the trademark and its exclusivity of use shall be obtained through registration'. Thus, the owner of a trademark can defend it from the following actions in Argentina:
- Counterfeiting: understood as the reproduction of the registered trademark.
- Fraudulent imitation: understood as the action of copying a registered trademark causing confusion for consumers.
- Use of goods or services that are counterfeit or fraudulently imitated or belonging to a third party, without authorisation.
- The sale or commercialisation of a trademark that is counterfeit or fraudulently imitated or belonging to a third party, without authorisation.
- The sale or commercialisation of products and services by including a trademark that is counterfeit or fraudulently imitated.
It is difficult for the owner of a trademark to prove the real damage caused by the marketing and selling of a counterfeit product or service. To that end, the judge will have to establish the relationship of the sale of the counterfeit products or services to the damage, and assess the possible award of damages.
The award of damages cannot be requested if three years have elapsed since the counterfeiting took place, or one year after the counterfeiting became known.
Regarding the amount of the claim, it was stated in the case of Ferrum SA de Cerámica y Metalurgia v. Derpla SA2 that the injured party can request the amount of the claim to be fixed at whatever is shown by the evidence. (Although the case refers to an industrial model, the ruling can also be applied to trademark disputes.)v Remedies
The Argentinian legal system states that anyone who causes damage must repair it.
This also applies to trademark matters.
To obtain a damage award, the judge will have to evaluate the circumstances at the time the infringement took place, including the nature of the infringing products, the characteristics of the consumers, the extent of the owner's income from sales, the reputation of the owner's trademark and the money invested in advertising, among other items.
Damages awards in trademark cases are made in the form of a monetary payment to the injured party.
Other enforcement proceedings
As well as awarding damages, the owner of a trademark may file an action for recovery of ownership with the aim of obtaining control of the trademark.
In cases of piracy, a nullity action is more appropriate (i.e., the registration of a pirated trademark would be ineffective). Nevertheless, the owner of the genuine trademark may choose between an action for recovery of ownership or a nullity action.
The counterfeiting of trademarks is punishable by a maximum of two years in prison, although a prison sentence is unlikely unless other criminal offences can be proven. However, criminal offences are common, since trademark counterfeiting usually involves tax evasion, money laundering and illicit association.
When a trademark owner wishes to stop counterfeit goods, he or she must apply to the criminal courts. However, companies normally also seek an award of damages to cover expenses incurred, which are obtained in the civil courts. A civil action must be filed, and if the damages are sufficiently high, this may serve as a deterrent to anyone considering committing similar crimes.
The Argentinian tax authorities foresee a customs alert system, consisting of a pre-emptive trademark information system that identifies at the time of registration destinations for which importers or exporters do not hold intellectual property rights for a particular merchandise, and warns the holders to identify whether the merchandise being imported or exported is counterfeit.