Legal framework Argentina has ratified the following laws and international treaties related to trademarks: • the Trademarks and Designation Law (22,362); • the Paris Convention; and • the Agreement on Trade-Related Aspects of IP Rights (TRIPs). Border measures In compliance with Articles 46 and 51 of TRIPs, Argentina has implemented border measures to ensure that enforcement procedures are available under the law, so as to permit effective action against any infringement of IP rights. Section 46 of the Customs Code (Law 25986) prohibits the import or export of goods which infringe trademarks or copyright. The Argentine tax authorities issued Resolution 2216 establishing the Customs Alert System, which allows rights holders to register their trademarks with Customs. Once a trademark has been registered in the alert system, all imports of goods bearing such trademark are blocked for three days, to allow the rights holder to inspect them and determine whether they are genuine. Rights holders can exclude certain importers, such as local distributors or licensees, from the automatic blocking system by informing Customs. Thus, once a trademark is registered with Customs, the only party that is allowed to import or export the goods identified with the mark is the rights holder or any authorised third party. Goods imported by other parties are detained and the rights holder is given a three-day period in which to inspect the goods and determine whether they are genuine or counterfeit. When goods are counterfeit, the importer generally abandons them for destruction. On the contrary, when products are genuine, the importer supplies the necessary information or documents to prove as such, after which the goods can be released immediately. Since its implementation, the Customs Alert System has proved an effective tool through which rights holders can combat counterfeiting in Argentina. For example, in June 2011 customs authorities successfully destroyed more than 1 million counterfeit items, including sunglasses, toys and electronic devices. Criminal prosecution The Trademark Law imposes penalties of three months’ to two years’ imprisonment and/or a fine, the amount of which is established by the National Executive, on any party which: • counterfeits or makes a fraudulent imitation of a registered trademark or name; • uses a counterfeit name or registered trademark or a fraudulent imitation thereof, or a name or mark which belongs to a third party without authorisation from that third party; • offers for sale or sells a counterfeit name or registered trademark, or a fraudulent imitation thereof, or a name or mark which belongs to a third party without authorisation from that third party; or • offers for sale, sells or otherwise markets products or services bearing a counterfeit registered trademark or a fraudulent imitation thereof. Criminal action for the abovementioned offences may be initiated by a public prosecutor of his or her own accord, by a court or as the result of a complaint filed by the rights holder or any third party. Complaints may be filed with the law enforcement authorities, which will commence pre-trial proceedings to search for evidence of the offence and the offenders. These criminal cases are heard by the federal courts in criminal and correctional matters; jurisdiction is determined on the basis of the place where the infringement occurred. Criminal proceedings are divided into two main stages: pre-trial proceedings and oral trial proceedings. Pre-trial proceedings involve: • verifying that an offence has actually been committed; • establishing the circumstances for characterisation of the facts; • identifying all parties involved in the facts; • verifying the personal records of the accused, any circumstances surrounding the act, any motives that may have influenced the accused’s will at the time that the offence was committed and any other factors that may reveal whether the subject is dangerous; and • assessing the extent of the damage caused by the offence. Once the judge has determined that the investigation is complete, he or she will serve notice on the prosecutor and complainant, which may request either that the proceedings be closed and the case be sent to oral trial or that further investigation be undertaken before the case is tried. The case is tried during several oral hearings before an oral court consisting of three judges. After the evidentiary stage, the oral court shall enter a final judgment. This decision may be appealed before the Federal Court of Cassation and ultimately before the Supreme Court. If the court finds the offender guilty, the injured party (ie, the rights holder) may request that the judge issue an order for the goods and other items bearing the infringed mark to be seized and sold. The injured party may also request destruction of the infringing trademarks and names, or of items bearing the infringing trademarks and names if the infringing marks and names cannot be separated from such items. On request by a party, the judge may order that the judgment be published, with any ensuing costs to be borne by the convicted party. Criminal actions are not usually sought in order to prosecute trademark infringement because criminal judges are unfamiliar with this type of case. There is also precedent according to which counterfeiting has been considered a misdemeanour. In a recent case the Federal Court of Cassation found that the sale of infringing products on a thoroughfare was not a crime because the quantity and the quality of the products offered for sale caused no actual injury to the rights holder. Another reason is that the threat of punishment is often offset by the chances of being granted conditional release or probation. Civil enforcement A rights holder has several civil remedies available in cases of trademark infringement.
Precautionary measures The Trademark Law and Article 50 of TRIPs provide for a wide variety of precautionary measures. The Trademark Law provides that the owner of a registered trademark which is made aware of the existence of products bearing an infringed trademark may request the court to: • levy an attachment on the products; • draw up an inventory and description thereof; and • seize a sample of the infringing products. Precautionary measures are a means of discovering the source of the infringing products. If premises are searched and transpire not to be the manufacturing facilities, the party responsible for such premises must provide information as to the party which sold the goods to it and produce the corresponding documentation in order to be considered prima facie not liable for the infringement. The courts have also granted precautionary measures under Section 50 of TRIPs preventing the infringer from using the infringing marks or selling products bearing such trademarks until a final decision has been rendered on the merits of the case. These measures are usually granted within a short period, especially when the counterfeit trademark is well known. Before any measure is applied, the court may request that a bond be posted to secure the defendant against any damages that may result from the measure if it is subsequently found that the measure should not have been granted. After a precautionary measure is enforced, it is necessary to file a court action requesting that the unauthorised use of the trademarks cease for the validity measure to be maintained. Cessation of use/damages A plaintiff may pursue an infringement action before the federal courts in civil and commercial matters requesting: • cessation of the use of its trademark; and/or • the award of damages in its favour. Compensation for damages includes any actual damage and any loss of profits proved to have been suffered by the rights holder. The likelihood of obtaining a large award depends on the evidence that the plaintiff can provide. However, the amount that may be awarded by the courts is likely to be less than the damages actually sustained. Punitive damages are not available in the Argentine legal system and only damage actually sustained by the rights holder may be claimed from the infringer. Before a court action may be filed, mediation proceedings must be completed. Mediation is a prerequisite for initiating court action. The purpose of mediation is to resolve disputes out of court through direct communication between the parties, assisted by a mediator. Thus, mediation constitutes a negotiation assisted by the mediator, which takes place at the mediator’s office. The mediator is a person who is formally trained to facilitate communication between parties. However, mediation does not guarantee a solution; nor is the mediator empowered to adjudicate. Therefore, the defendant may refuse to execute a settlement document at the mediation. Exploitation ancillary proceedings The Trademark Law provides another proceeding for trademark infringement cases – ancillary proceedings called incidente de explotación. In such proceedings, the rights holder may require alleged infringers to post a bond or provide an adequate guarantee to cover possible damages should the court finally rule that there has been an infringement. Alternatively, the alleged infringer may elect not to post the requested bond and interrupt the objected use, and may require in turn that such bond or guarantee be posted by the plaintiff. Out-of-court claims In addition to the abovementioned ways to pursue infringements in court, there are other ways by which to pursue a claim out of court, such as sending warning letters to the infringer requesting it to cease the infringement immediately and undertake not to commit it again in the future. However, sending a warning letter risks alerting the infringer of the plaintiff’s position, affording it time to prepare a defensive strategy or hide the evidence of trademark infringement.
Anti-counterfeiting online The rate of trademark infringement on online auction sites has increased notably in recent years. Most of these sites have adopted IP rights programmes to address the claims filed by rights holders. In this regard, notice and takedown proceedings are a cost-effective solution to deal with this problem and reduce the quantity of counterfeit products available via the Internet. There is no specific regulation under Argentine law regarding the liability of internet service providers (ISPs). Some bills were discussed in Congress, but were not approved. Consequently, the general regime on contractual or tort liability and related statutes apply. In order to ascribe liability for an act or omission, the following standards must be proved: • unlawful conduct; • damage; • a causal relationship; and • determination of liability. In the absence of specific regulations governing ISP liability for IP infringements, the courts have addressed the matter pursuant to the general principles of tort liability, particularly in cases filed by actresses and models against web search engines such as Google and Yahoo!. In this regard, the question before the courts as to whether ISPs face liability for the content published on the websites is controversial. Some courts have held that ISPs are responsible for the content of the website, while other courts have rejected liability claims. Several of these decisions have been appealed before the Supreme Court – the highest court in Argentina. The Supreme Court is expected to issue a decision that should put an end to this controversy and rule on the liability criterion to be applied to ISPs for damages caused by the contents of the websites that they host. Preventive measures/strategies Comprehensive and complete anti-piracy action involves not only filing civil and/or criminal actions where a wrong has been committed, but also taking any required preventive measures and working jointly with law enforcement agencies and the relevant authorities. It is useful to build a relationship and work closely with the law enforcement authorities that investigate infringement cases. This facilitates the collection of information related to potential cases of trademark infringement and the adoption of expedited solutions to counteract trademark piracy. The use of technology to detect infringements – mainly information available on the Internet and via social media – is often helpful in preparing a case and the corresponding action. Private investigators are often used where the infringement is complex or where infringers are not easy to find. Any information that they provide is generally used in the action.