Trade Marks & Copyright 2025 Comparisons

Trade marks are governed by Trade Mark Law No 22.362 and copyrights are governed by Copyright Law No 11.723. Argentina is not a common law country.

Argentina has ratified of the following treaties:

• the Paris Convention (Law No 17.011);
• the TRIPS Agreement (Law No 24.425); and
• the Berne Convention (Law No 25.140).

All of these treaties are self-executive.

Argentina’s legal system allows the protection of collective marks; certification marks, denomination of origin, indication of origin and geographical indications; emblems, as well as well-known trade marks. Argentine Trade Mark Law sets out in Article 1:

“The following can be registered as trade marks to distinguish products and services: one or more words with or without conceptual content; drawings; emblems; monograms; engravings; prints; the stamps; the images; the bands; the colour combinations applied to a particular place on the products or packaging; the wrappings; packaging; the combinations of letters and numbers; the letters and numbers for their special drawing; advertising phrases; reliefs with distinctive capacity and any other sign with such capacity.”

Brands can be traditional or non-traditional. Within traditional marks are wordmarks, labels and figurative marks. Non-traditional marks that can gain protection include tridimensional, combination of colours, position marks, sounds, olfactory, tactile, gustatory, movement, multimedia (movement and sound), hologram, trade dress as well as the shapes of buildings.

Proper names, pseudonyms and portraits may be registered as trade marks only by the physical person themselves or with their consent or that of their heirs up to and including the fourth degree.

A collective mark is a common distinctive sign that identifies products and services provided by enterprises aimed at the development of the social economy. This type of trade mark is governed by Law No 26,355. 

Law No 25.380 foresees the protection of geographical names, regulating two categories: Geographical Indication and Denomination of Origin.

Foreign appellations of origin are not registrable as trade marks. The designation of origin is understood as the name of a country, a region, a place or a specific geographical area that serves to designate a product originating from them and whose qualities and characteristics are due exclusively to the geographical environment. An appellation of origin is also considered to refer to a specific geographical area for the purposes of certain products.

Emblems, on the other hand, may be registered as trade marks, although the registration of trade marks, as well as elements of the aforementioned trade marks, of coats of arms, flags and other state emblems of the countries of the Union, official signs and hallmarks of control and guarantee adopted by the member countries of the Paris Convention are forbidden.

Argentina is a member of the Paris Convention and the TRIPS Agreements granting protection to well-known trade marks.

Trade marks must have distinctive character to be registrable. To build the distinctive character of a brand, one should consider, for example, the logo, typography, colours and name, among others.

Acquired distinctiveness is a process that requires time and effort. To determine whether a trade mark has acquired a secondary meaning, it must be demonstrated that, by the mere fact of the trade mark consumers perceive the goods or services in question as coming from a particular origin. To demonstrate that a trade mark has acquired distinctiveness, the applicant must submit evidence, such as:

• ownership of one or more prior registrations of the same trade mark;
• time of use of the brand in the market;
• advertising expenses;
• survey evidence, market research, consumer feedback studies;
• statements by merchants and consumers indicating recognition of the trade mark applied for as a trade mark; and
• other miscellaneous factors, especially evidence demonstrating consumer recognition of the mark applied for as a mark for the applicant’s goods or services.

The trade mark registration grants the owners the exclusive use of the registered trade mark. It also authorises the exercise of all necessary defences to prevent third parties, without authorisation, from marketing identical products or services with the same or similar trade mark, or one that may cause confusion.

These rights are exclusive to the owner; however they are liable to be lost if the trade mark has not been used since the fifth year of registration, by the action of a third party requesting the cancellation of the trade mark on the basis of the lack of use.

In order to maintain the registration of a trade mark, an affidavit of use must be filed indicating that the trade mark has been used; however it is not necessary to accompany evidence of such use.

If a trade mark faces cancellation due to lack of use, the trade mark owner has the burden of proof of said use.

This use must be real, public, consistent and prolonged in the country, even for goods/services other than those distinguished by the trade mark registration, as long as they are related.

Evidence such as links, photographs, publications, packages, labels, advertisements and invoices are admitted in order to demonstrate the use of the brand.

The trade mark ® symbol is only used if the trade mark has been granted.

In Argentina, symbols such as TM and SM are also often used, although the trade mark is not yet registered.

In no case is it mandatory to include these symbols in the application for trade mark registrations, since their use is totally optional.

There are certain trade marks that can be protected under other legal systems such as Copyright and/or Industrial Designs. For example, logos, cartoons or titles of works/series/movies. Surnames can only obtain trade mark and copyright protection by the physical person or with their consent.

In Argentina, the following can be protected by copyright: literary works, musical works, choreographies, graphic or sculptural works, architectural works, computer programs, databases, plastic works, multimedia works and scientific works.

The basic requirements to obtain copyright protection are novelty, authorship and originality.

The author is the person who creates the work, as well as their collaborators. If the work is created by commission, several issues shall be taken into account – eg, if the person hired to create a work can do so thanks to all the tools offered by the employer, the authorship will be the employer’s; if they were only hired to do a specific work but they were not provided with tools for that purpose, the authorship will be of the real creator of the work. However, specific prior agreements may be made clarifying these issues prior to the registration process.

On the other hand, the Argentine copyright law does not provide for creations made by non-human persons as well as by artificial intelligence and there is still no jurisprudence in this regard in the country.

In cases of co-authorship, those who have participated in the creation of the work to be registered shall be taken into account. The main author is defined as the person who carries out the research and writes and edits the manuscript and the co-author is the one who collaborates with the main author and contributes to the work of the manuscript.

The percentages of ownership shall be agreed by the parties.

According to Law No 11,723, the right of ownership of a scientific, literary or artistic work includes for its author the right to dispose, publish, execute, represent, exhibit and translate the same and to adapt it or to authorise its translation and to reproduce it in any manner.

Moral rights in the field of copyright include two specific aspects:

• the right of recognition of the authorship of the services of the work; and
• the right of an author to preserve the integrity of the work, that is, to refuse any possible amendments or derivative works of the same.

The intellectual property rights over their works correspond to the authors during their lifetime and to their heirs or successors up to 70 years from January 1st of the year following the death of the author.

In the case of collaborative works, this term will begin from January 1st of the year following the death of the last collaborator. For posthumous works, the term of 70 years shall begin to run as from January 1st of the year following the death of the author.

All copyrights will end after the term stipulated.

In Argentina there are Collective Management Societies that administer the rights of the owners and collect royalties for the public performances of the works that are in their repertoire, distributing the income received among their members. These companies can also grant licences and monitor compliance with the contracts they manage.

In Argentina, some of the best-known collective management societies are: ARGENTORES (General Society of Authors of Argentina), SADAIC (Argentine Society of Authors and Composers of Music) and AADI CAPIF (Society of Phonographic Performers and Producers).

The work must be registered before the National Directorate of Copyright in order to enjoy copyright protection. The Directorate will provide the presumption of validity and the possibility of legal action.

The Argentine Copyright Office (DNDA) holds the publicly available register.

Any natural or legal person may be the owner of a copyright. It is necessary for foreign applicants to have a legal representative in the country. Notices and symbols are not mandatory.

The requirements to apply for a copyright application are to pay the government fee, fill out a form with all the data of the owners and send the work to the DNDA. In case the authors wish to make the deposit in custody of the unpublished work, it must be sent by mail or taken to the DNDA in person in a signed envelope at all closing points.

The government fees that must be paid range from ARS600 for unpublished works and from ARS1,100 for works already published.

The DNDA shall reject works that by their nature are not registrable as copyright and works that are detected to have been created by artificial intelligence, as well as those that lack originality.

The resolutions of the DNDA may be appealed in accordance with the provisions of Law No 19,549.

Certain cases, such as titles of movies, books or cartoons, etc, may be protected both as a trade mark and a copyright.

To obtain trade mark rights, the mark must be registered. The registration of a trade mark guarantees the owner ownership of the trade mark. It enables the owner to exercise all the necessary actions to prevent non-authorised third-party use and the marketing of identical or similar goods or services with the same trade mark or using a name so similar that it may create confusion among consumers.

The registration also protects against partial or total imitations, whether of names, words, signs or advertising phrases, as well as their drawings and colours.

The owner may authorise trade mark use by third parties through licence agreements, both exclusive and non-exclusive, sell them in whole or in part for products or obtain credits by offering them as a collateral through a pledge registration.

For the registration of collective marks, a different procedure is applied. This type of trade mark may only be applied for and owned by a single group made up of producers and/or service providers registered in the National Registry of Local Development and Social Economy Effectors.

In Argentina, the body in charge of the registration, administration and trade mark prosecution is the National Institute of Industrial Property (INPI).

The INPI has only one registry; there are no complementary or secondary registers. It has a public database that only allows one to search for an identical trade mark by identical word that “begins with or contains that word”, both current and expired. It also allows searches by headlines.

To this end, the INPI offers word, graphic and phonetic searches for a fee. However, specialised IP firms in the field have in-depth search system software.

It is highly advisable to conduct a search before the filing of trade mark application.

The term of validity of a trade mark is ten years from the date of granting, renewable indefinitely for consecutive periods of ten years. A trade mark can be renewed from six months prior to the date of expiration, up to six months after that date (grace period).

There are two requirements in order to renew the registration of a trade mark: to have filed the Mid-Term Use Affidavit (MTDU) and to file the Sworn Declaration of Use (SDU) declaring the use of the trade mark during the five years prior to its expiration.

In no way is it possible to modify the trade mark at the time of renewal, nor to extend or amend the goods or services protected.

If a trade mark registration has expired, it is not possible to reactivate it, and a new trade mark application must be filed.

In order to apply for a trade mark, it is necessary to fill out an online form, with the information of the applicant and the trade mark, namely: name, class, items to be protected and type. This must be accompanied by the necessary documentation, according to the type of application, for example, the logo if it is a label or a pentagram along with an MP3 file if it is a sound trade mark.

Multi-class applications are not allowed in Argentina.

The official fees for a trade mark application in one class are ARS17,680 – which covers up to 20 goods or services. Each surplus item to be protected costs of ARS200.

Trade marks can be applied for by individuals or legal entities, public entities, or non-profit associations, national or foreign. Foreign companies must act through a patent and trade mark agent or an attorney licensed to practise in Argentina.

Prior use is not a requirement for registration of a trade mark.

The INPI makes a substantive examination of new trade mark applications, where, among other items, it checks whether there is, for the same or related classes, a prior right, namely a previous registration or a pending application in the name of a third party for an identical or very similar trade mark that could cause confusion. 

The Trade Mark Office makes such checks regardless of whether or not the mark has received oppositions from third parties. If there is any prior right in force, the Trade Mark Office issues an office action in order for the applicant to answer what it deems necessary to safeguard its trade mark application.

Third parties have the possibility to file an opposition based on their prior rights within 30 calendar days counted as from the publication of the trade mark.

If a trade mark application receives an opposition and then it is maintained through the filing of an additional writ, the administrative opposition resolution procedure is initiated.

The Trade Mark Office may deny an application, even if it has not received oppositions, based on prior rights or other grounds.

An applicant may withdraw a trade mark application by filing a writ. It is not possible to amend, modify or correct a trade mark application unless the change is the actual address of the applicant or a limitation of protection within the same class in which it was applied for. The latter change, if possible, must be requested before the publication of the trade mark in the Official Bulletin.

The division of a trade mark application is not possible in Argentina.

Mistakes that are minor, such as the address, can be changed by filing a writ. Substantially incorrect information, such as the incorrect class, may result in an office action or even the denial of the application.

The Trade Mark Office may reject a trade mark application if it considers that it is infringing the prohibitions established by the Argentine Trade Mark Law, as follows:

• when the trade mark applied for is names, words, signs and advertising phrases that have passed into general use prior to its application for registration;
• when the trade mark applied for is a Geographical Indication or Denomination of Origin;
• when the trade mark applied for is words, drawings and other signs contrary to morality and good manners;
• when the trade mark applied for is designations of activities, including names and corporate names, descriptive of an activity, to distinguish products; or
• when the trade mark applied for is letters, words, names, distinctive signs, symbols, or emblems used or to be used by the nation, provinces, municipalities, religious and health organisations or used by foreign nations and international organisations recognised by the Argentine government.

Upon this type of resolution, the applicant may file an appeal with the Trade Mark Office within ten working days counted as from the official notification. If the appeal is rejected, a further appeal may be filed for the final decision of the President of the INPI.

Argentina is not a member of the Madrid System.

Any third party with a legitimate interest may file an opposition within 30 days from the publication of the trade mark in the Official Bulletin.

It is not possible to request extensions or time to file an opposition.

There are two moments of “reflection to reach an amicable solution”. The first one is after the official notification of the opposition, for a term of three months. The second one, optional, is requested by means of a joint brief filed by the parties during the process of administrative resolution of the opposition, which suspends all deadlines for a period of 30 calendar days.

Oppositions and/or cancellations may be based on the rules as foreseen in the Trade Mark Law, in Articles 2, 3, 24 and 26.

The existing remedies are expiration in cases of non-use and nullity in cases of defects.

Different remedies may be filed at the Trade Mark Office to re-examine a decision: reconsideration, hierarchical and appeal.

Any third party may file an opposition on the basis of the legal prohibitions of registrability set forth in the Trade Mark Law. One does not necessarily have to be the owner of a trade mark application or trade mark registration, but may also oppose on the basis of trade marks abroad, trade marks used or on the basis of a trade name (based on the Paris Convention and the TRIPS Agreement).

In order to file an opposition, you do not need an attorney. However, to initiate the administrative resolution of oppositions, representation is necessary.

The cost to file an opposition with the Trade Mark Office is ARS17,680 and trade mark maintenance costs are ARS88,400. Lawyers’ fees will vary according to experience and prestige.

A revocation or nullity action may be filed by third parties with a legitimate interest or ex officio by the Trade Mark Office.

Once the trade mark is published in the Official Bulletin, third parties have 30 calendar days to file an opposition. The applicant is officially notified and has a term of three months to obtain an amicable withdrawal of the objection

At the end of this period, if the opposition has not been withdrawn, the Trade Mark Office will notify the opponent to maintain the opposition within 15 working days, paying an additional fee, expanding on the grounds and providing the proof it deems necessary.

If the opposition is not maintained, the trade mark application returns to substantive examination by the Trade Mark Office.

Subsequently, the Trade Mark Office notifies the applicant only of the maintained oppositions and grants the applicant a term of 15 working days to pay the fee corresponding to the opposition resolution, and also to answer each maintenance, providing the proof they consider necessary.

Acceptable proof includes documentary evidence of previous trade mark registrations both in Argentina and abroad and proof of use, such as brochures, invoices and related links.

Further, there is a period of 40 days to produce the accompanying proof and the Trade Mark Office issues an opinion on this proof, informing which is accepted and which is denied. 

There is then a period of ten working days to file a voluntary writ containing the final arguments; at this time it is also possible to request the suspension of deadlines to reach an amicable agreement.

None of these deadlines can be extended.

Finally, if the opposition has not yet been withdrawn, the Trade Mark Office will issue its decision, informing whether it was well-founded or ill founded.

Likewise, together with the maintenance or opposition process, the parties may file a cancellation or nullity action.

Partial cancellations and nullities are acceptable in Argentina.

According to Section 17 of the Trade Mark Law, the resolutions on oppositions issued by the National Directorate of Trade Marks shall only be subject to direct appeal before the National Chamber of Appeals in Civil and Commercial Federal Matters within 30 working days as from their official notification. The appeal shall be filed with the National Institute of Industrial Property, which shall forward it to the courts under the conditions set forth in the corresponding regulations.

Amendment is not possible in revocation/cancellation proceedings.

Decisions in infringement and revocation cases are processed separately since their purposes are different. Expiration arises due to lack of use and infringement looks at the damage caused. The deadlines are also different since they are different procedures.

In the event of a fraudulent application, a nullity procedure may be initiated.

There is no way to suspend an application when investigation results are pending.                                           

The consequences for an applicant if it is found that it fraudulently filed an application is the nullity of the trade mark.                                                                                                                                                                                                                                                                                                                                                       

Assignment of a trade mark:

• must be for an economic compensation;
• is a lease between human or legal persons;
• allows that any intangible right may be transferred; both the application and the registration, either by acts between the living or by reason of death; and
• requires a public or private instrument with the certified signature of the assignor before a notary public.

Assignments can be partial or total.

In the event of death, the rights are transferable.

A trade mark licence can be granted through donation, free or onerous transfer, trust, transfer of goodwill, allocation of assets, merger or transformation of companies or judicial auction. Inheritance will or legacy are also registered due to death.

The licences are for an agreed term.

Applications can also be licensed.

Recording the assignment is not mandatory. However, it must be registered before the Trade Mark Office to be valid against third parties. For registration purposes, a form with the original assignment (or a certified copy of it) as well as the original certificate of registration (or an official certified copy) must be submitted.

The Trade Mark Law No 22,362 defines what actions can be taken in case of infringement, and clarifies that civil actions became due three years after they took place or one year from the time the infringement was known. This is not the case for criminal actions or for copyright infringements, which do not have a specific term.

Trade Mark Law No 22,362 establishes that the counterfeiting or fraudulent imitation of a registered trade mark is punishable by imprisonment for a period of three to 6 six years and a fine. In addition, the injured party may choose to (i) confiscate and sell the goods and other elements with the infringing trade mark; or destroy the infringing marks and designations and all the elements that carry them, if they cannot be separated from the product itself. The trade mark must be registered in order for these actions to be carried out.

Copyright Law No 11,723 establishes that non-compliance with intellectual property obligations is punishable with a fine. Copyright infringement is considered a criminal offence and is punishable by fines, confiscation of property and imprisonment. In the event of plagiarism, provisional and precautionary measures may be filed as well as civil or commercial lawsuits.

The elements of the different types of infringement are compared based on the infringer’s intent, trade mark use, likelihood of confusion, and damage to the trade mark owner’s reputation. Direct infringement is characterised by the use of the registered trade mark in a direct manner and with the intention of confusing, while indirect infringement is characterised by the use of a similar trade mark and the likelihood of confusion. Contributory infringement is characterised by the use of the mark in different markets and the likelihood of confusion, and infringement by omission is characterised by non-use of the mark and the likelihood of confusion.

Trade mark infringements take place upon:

• fraudulently counterfeiting or imitating a trade mark or designation;
• use of a counterfeit, fraudulently imitated, or third-party trade mark or designation without the owner’s authorisation;
• the offer for sale or sale of a counterfeit, fraudulently imitated or belonging to a third-party trade mark or designation without the owner’s authorisation; and
• the offer for sale or sale, or otherwise marketing the counterfeit or fraudulently imitated trade mark products or services.

Copyright infringement takes place upon:

• editing, selling or reproducing by any means or instrument, an unpublished or published work without the authorisation of its author or successors;
• forging intellectual works, understood as the edition of a work already published, falsely displaying the name of the publisher authorised for that purpose;
• editing, selling or reproducing a work by deleting or changing the name of the author, the title of the work or intentionally altering its text; and
• editing, or reproducing a greater number of duly authorised copies.

In order for an action for infringement of industrial or intellectual property to be successful, the following elements must be proven:

• existence of the intellectual property;
• infringement;
• causality;
• fraud or fault; and
• legitimate property.

In Argentina, the elements of the different types of infringement may be considered as follows.

• Direct infringement: Use of the trade mark, brand identity, use in the same market and intent to confuse.
• Indirect infringement: Use of a similar trade mark, likelihood of confusion, use in a related market and intent to take advantage of the reputation and goodwill of the trade mark.
• Contributory infringement: Use of the trade mark in different markets, risk of confusion, intention to compete and use of the trade mark in an unfair manner.
• Infringement by omission: Non-use of the trade mark, risk of confusion, intent to take advantage and use of a similar trade mark.

There are several trade mark claims that can be filed, in addition to direct and indirect infringement.

• Dilution by blurring. The elements of this claim are:
1. widespread use of the trade mark by third parties;
2. loss of brand distinctiveness; and
3. damage to brand reputation.
• Dilution by tarnishing. The elements of this claim are:
1. brand association with low-quality products or services;
2. decreased brand value; and
3. damage to brand reputation.
• Cybersquatting. The elements of this claim are:
1. occupation of an internet domain name identical or similar to the registered trade mark;
2. intent to gain financial gain or cause harm to the brand; and
3. use of the internet domain name in a manner that may cause confusion or damage to the reputation of the trade mark.

All of these claims are set forth in the following statutes:

• Trade Marks and Designations (Law No 22.362);
• Copyright Law (Law No 11.723);
• Consumer Defence Law (Law N° 24.240); and
• Software Law (Law No 25.036).

In determining whether the use of a trade mark or copyright constitutes infringement, the following factors must be considered:

• similarity;
• confusion;
• commercial use;
• scope of protection; and
• rights of the owner.

These factors are established by law, and are regulated in the following laws:

• Trade Marks and Designations (Law No 22.362);
• The Copyright Law (Law No 11.723);
• The Paris Convention for the Protection of Industrial Property (Law No 17.011);
• The Berne Convention for the Protection of Literary and Artistic Works (Law No 22.195); and
• The TRIPS Agreement (Law No 26.662).

In order to proceed with the filing of a lawsuit, the following is required:

• registration of the trade mark at INPI or copyright at DNDA;
• proof of infringement, such as documents, photographs, recordings, etc; and
• a prior warning letter to the infringer is advisable, as well as the possibility of calling the same to a mediation hearing in order to obtain the end of the infringement.

Certain restrictions limiting the ability of the trade mark or copyright owner to enforce their right against third parties are regulated by the following laws:

• Law on Trade Marks and Designations (Law No 22.362) – establishes the restrictions for the use of the trade mark and the territorial limits;
• Copyright Law (Law No 11.723) – establishes restrictions for the use of copyright and territorial limits;
• Law for the Defence of Competition (Law No 25.156) – establishes the restrictions for the use of the trade mark or copyright in relation to competition; and
• Civil and Commercial Code – establishes the restrictions for the exercise of trade mark or copyright rights in relation to good customs and commercial ethics.

Some of the most common restrictions are:

• unfounded threats;
• misuse/abuse;
• competition law;
• territorial limits;
• limitation period;
• exceptions and limitations;
• good manners; and
• proportionality.

It is worth highlighting that prerequisites may vary depending on the specific circumstances of each case.

In the case of trade mark infringements, the actions will be brought before the Federal Criminal and Correctional Court for criminal actions, and before the Federal Civil and Commercial Court for civil actions

Please bear in mind that trade mark and copyright cases fall under Federal courts, as established by Article 17 of the National Constitution.

Before initiating a legal action, mandatory pre-judicial mediation must be complied with. It is also common that prior to the mediation there is an exchange of cease-and-desist letters. The parties must always, in any type of judicial litigation and even before the administrative authorities in charge of regulating the rights of Industrial Property (INPI, DNDA, etc), be represented by an attorney. 

Owners of foreign trade marks or copyrights can file infringement lawsuits. It is essential and advisable that they have the trade mark or work registered in Argentina.

The merely declaratory action is regulated as the means to obtain the court’s declaration on:

• whether there is a right of the plaintiff (positive declaratory action); or
• whether there is no right of the defendant (negative declaratory action).

The legal system requires three presuppositions for the action to be admissible:

• uncertainty about the existence, scope, or modality of a legal relationship;
• that such a lack of certainty may cause damage or injury; and
• that there is no other useful tool or way to immediately put an end to the state of uncertainty.

For reasons of equity and contrary to the precautionary measures that the plaintiff may request, it is justified that the defendant does not bear the damages when, once the merits of the matter are decided, it is resolved that there was no violation of the intellectual rights of another person.

The TRIPS Agreement, which is applicable in Argentina, provides that in cases where interim measures are instigated or expire by the action or omission of the complainant, or in those cases where it is subsequently determined that there has been no infringement or threat of infringement of an intellectual property right, the judicial authorities shall be empowered to order the complainant, at the request of the respondent, to give the defendant adequate compensation for any damage caused by these measures. The post of a bond or an equivalent guarantee that is sufficient to protect the defendant and prevent abuse is provided.

There are alternative ways to resolve small trade mark or copyright claims, namely mediation and arbitration.

The fora hearing these cases are the Mediation and Arbitration Centre of the Buenos Aires Chamber of Commerce and small cause courts.

The legal bodies hearing the claims are:

• trial judges – these courts are responsible for resolving trade mark and copyright disputes in the first instance;
• court of appeals – the courts that are responsible for resolving appeals from decisions of first instance; and
• Supreme Court of Justice – the highest court that is responsible for resolving appeals from the decisions of the lower courts.

Decisions by trade mark or copyright offices can have significant effects on infringement actions, as follows:

• effects on the validity of the trade mark or copyright;
• effects on the admissibility of the infringement action;
• effects on the determination of the infringement; and
• effects on the amount of compensation.

In Argentina, civil courts may consider the decisions of trade mark or copyright offices as evidence in the infringement action. However, civil courts are not bound by these decisions and can make their own decisions based on the evidence filed in the case.

In Argentina, a counterfeit trade mark or copyright counterfeit refers to the reproduction, distribution, or commercialisation of products or works that infringe the intellectual property rights of a trade mark or copyright owner, without their authorisation or consent.

Trade mark and copyright counterfeiting is a criminal offence in Argentina, and is regulated by the Trade Marks and Designations Law (Law No 22,362) and the Copyright Law (Law No 11,723).

In Argentina, there are several procedures and remedies to address trade mark and copyright counterfeiting, including:

• criminal complaint;
• civil action; and
• administrative procedure.

There are several special laws that address trade mark and copyright counterfeiting, including:

• Law on Trade Marks and Designations (Law No 22,362) – regulates the protection of trade marks and designations in Argentina, and establishes criminal and civil penalties for counterfeiters;
• Copyright Law (Law No 11,723) – regulates the protection of copyright in Argentina, and establishes criminal and civil penalties for counterfeiters; and
• Consumer Defence Law (Law No 24.240) – regulates consumer protection in Argentina, and establishes criminal and civil penalties for counterfeiters who affect consumers.

In Argentina, a party may be subject to criminal liability for counterfeiting if it is proven that it has committed a trade mark or copyright counterfeiting offence. Criminal penalties may include:

• imprisonment – up to six years in prison for trade mark and copyright counterfeiters;
• fines; and
• disqualification – from engaging in any commercial or professional activity related to counterfeiting.

Smuggling refers to the import, export or movement of prohibited or restricted goods without payment of the corresponding customs duties or without complying with established legal requirements. Smuggling can include the introduction of goods that are counterfeit, pirated or infringe intellectual property rights.

Procedures and Remedies

• Customs: Argentine Customs is the body responsible for preventing and fighting against smuggling. Customs can carry out inspections and controls at ports, airports and borders to detect smuggled goods.
• Federal Police: The Argentine Federal Police is the agency responsible for investigating and prosecuting smuggling crimes.
• National Prosecutor’s Office: The National Prosecutor’s Office is the body responsible for prosecuting smuggling and intellectual property crimes.
• Federal Courts: The Federal Courts are the judicial bodies that are responsible for judging smuggling and intellectual property crimes.

Parties that may be subject to criminal liability:

• importers and exporters;
• carriers;
• distributors and sellers; and
• business owners and managers.

There are special procedural provisions for trade mark and copyright court proceedings.

The courts dealing with trade marks and copyright matters are the National Courts of First Instance in Federal Civil and Commercial Matters.

Special Procedure

The procedure for trade mark and copyright cases is special and is governed by the Trade Marks and Designations Law (Law No 22,362) and the Copyright Law (Law No 11,723).

Experts

In cases of copyright and trade marks, experts may be appointed to issue opinions on technical issues related to the matter.

Evidence

In copyright and trade mark cases, documentary, testimonial and expert evidence may be submitted to prove infringement or validity of the trade mark or copyright.

Mediation

Mediation hearings may be applicable to resolve disputes related to trade marks and copyrights.

Appeals

Appeals may be filed against court decisions in trade mark and copyright matters.

The parties cannot directly influence on the final decision of the court.

There are several courts specialising in intellectual property, such as the:

• National Court of First Instance in Federal Civil and Commercial Matters;
• Competition Tribunal; and
• National Institute of Industrial Property (INPI).

In Argentina, when the owner of a trade mark or copyright is the owner of a registration, they receive several judicial benefits, such as:

• presumption of validity;
• presumption of ownership;
• presumption of use;
• limitations on defences; and
• use of the trade mark for the same products and services.

Regarding the similarity of goods and services, Argentine law establishes that a trade mark will be considered similar to another if:

• it is used for identical goods or services to those listed in the trade mark registration;
• it is used for similar goods or services to those listed in the trade mark registration, and it is shown that it is likely to cause confusion among consumers; or
• it is used in a way that is likely to cause confusion to the public, regardless of whether it is used for identical or similar goods or services.

As for the period of time after which certain defences are not available, Argentine law provides that:

• after five years from the date of registration of the trade mark or copyright, the alleged infringer cannot claim that the trade mark or copyright is invalid or that it has not been used effectively; and
• after ten years from the date of registration of the trade mark or copyright, the alleged infringer cannot claim that the trade mark or copyright is not owned by the owner.

The typical costs of pursuing a trade mark or copyright infringement action in the first instance can vary depending on several factors, such as the complexity of the case, the amount of evidence and witnesses, etc. Below are some of the typical costs and factors that significantly influence the expected costs:

Typical costs:

• attorney’s fees;
• costs of filing the lawsuit;
• notification costs;
• costs of evidence and witnesses; and
• costs of expert reports.

Factors that significantly influence the expected costs:

• case complexity;
• amount of evidence and witnesses;
• experience and specialisation of the lawyer;
• location of the court;
• duration of the process;
• level of opposition of the defendant; and
• need for expert reports.

There are several defences to trade mark infringement, which can be classified into two categories: absolute defences and relative defences. Some of the most common defences are as follows.

Absolute Defences

Priority

The priority defence is based on the fact that the defendant registered their trade mark before the plaintiff. In order for this defence to be valid, the defendant must show that their trade mark was registered prior to the plaintiff’s trade mark.

Abandonment

The abandonment defence is based on the plaintiff having abandoned their trade mark, meaning that they have not used it for an extended period of time. For this defence to be valid, the defendant must show that the plaintiff has not used their trade mark for at least five years.

Expiration

The revocation defence is based on the fact that the registration of the plaintiff’s trade mark has expired. In order for this defence to be valid, the defendant must show that the plaintiff’s trade mark registration has expired.

Relative Defences

Relative defences include:

• fair use;
• functionality;
• defence of the proper name;
• limitation;
• the defence of laches;
• the estoppel defence; and
• acquiescence.

In Argentina, these defences are recognised by law and can be invoked in a trade mark infringement lawsuit. The Trade Marks and Designations Law (Law No 22,362) and the Copyright Law (Law No 11,723) establish the defences that can be invoked in a lawsuit for trade mark and copyright infringement.

Argentina recognises an exception to copyright infringement. The Copyright Law (Law No 11,723) establishes in its Article 32 that the use of a work protected by copyright for the purposes of criticism, commentary, news, teaching, research or study will not be considered a copyright infringement, as long as the source and the name of the author are mentioned, and that the use is reasonable and does not affect the normal exploitation of the work.

The Supreme Court of Justice has also established in several rulings that satire and parody can be considered as an exception to copyright infringement, as long as certain requirements are met, such as:

• the satire or parody is an original work;
• the satire or parody is a criticism or commentary;
• the satire or parody does not affect the normal exploitation of the work; and
• mention is made of the source and name of the author.

Argentina recognises several exceptions to trade mark infringement. Article 12 of the Trade Mark and Designation Law (Law No 22,362) establishes that the use of a trade mark will not be considered a trade mark infringement in the following cases:

• descriptive use;
• generic use;
• comparative use (according to certain characteristics);
• use for criticism or commentary purposes;
• use for teaching or research purposes;
• use of an earlier mark; and
• use of a trade mark in a different context.

In addition, the Supreme Court of Justice has established in several rulings that the use of a registered trade mark can be considered as an exception to trade mark infringement if certain requirements are met, such as:

• that the use of the trade mark is honest;
• that the use of the trade mark is not unfair; and
• that the use of the trade mark does not affect the distinctiveness of the registered trade mark.

Argentina has adopted the international exhaustion system. Consequently, it could be argued that there is no legal framework by which the entry into the country of genuine products introduced into the international market through their owner or with their consent can be prevented. As they are legitimate goods, the import could not be classified as counterfeit or fraudulent imitation. Likewise, as it consists of goods acquired from the trade mark owner or from its licensees, distributors or dealers, it could not be classified as the use of another person’s trade mark without authorisation or marketing of counterfeit products.

Argentine jurisprudence has been inclined to adopt the criterion of international exhaustion. This implies that when the owner of the trade mark has placed the goods bearing the trade mark on the market in Argentina and abroad, the owner has been denied preventing the entry and circulation of genuine merchandise identified as legitimate merchandise introduced by third parties outside the official distribution network.

There are certain circumstances that entitle the owner of a trade mark to take legal action when the intermediary subject performs acts that are incompatible with the functions of the trade marks, such as those guaranteeing origin and quality. In these cases, exhaustion does not occur, even if the product has been placed on the market by the trade mark owner or through a third party with their authorisation.

• Removal of the original trade mark by another that did not originally distinguish the marked product, including cases of repackaging or repacking of a foreign trade mark.
• Removal or deletion of the original trade mark.
• Sale of products with an original brand, in the case of second-hand, used or defective products, without due clarification of these conditions.
• Sales of products with an original trade mark, which have undergone alterations, amendments or manipulations of any importance without the consent of their owner.

In Argentina, precautionary measures are legal instruments that allow the owner of a trade mark or copyright to request the judge to order measures to prevent or avoid irreparable or irreversible damage while the main dispute is being resolved. The following precautionary measures are available:

• interim actions;
• advertisements;
• freezing of bank accounts;
• confiscation of goods; and
• inspection of premises.

The judge has discretion to order injunctive relief, but must consider the following factors:

• probability of success;
• irreparable damage;
• defendant’s interests; and
• warranties.

Precautionary measures will be granted in the following circumstances:

• urgency;
• probability of success;
• irreparable damage; and
• posting of a bond.

The judge will consider the following factors when evaluating the request for the granting of an injunctive relief.

• The seriousness of the infringement: The judge will consider the seriousness of the trade mark or copyright infringement.
• The amount of damage: The judge will consider the amount of damage that has been caused or that can be caused.
• The defendant’s conduct: The judge will consider the defendant’s conduct and whether they have demonstrated an intent to infringe the trade mark or copyright.
• The plaintiff’s ability to comply with the injunctions: The judge will consider the plaintiff’s ability to comply with the injunctions and whether they have the necessary resources to do so.

To receive an injunction in Argentina, the owner of a trade mark or copyright must demonstrate irreparable harm, a likelihood of success, urgency and a balance of difficulties. On the other hand, the defendant may oppose the injunction on the grounds of common defences, delays, issues of fairness, lack of evidence, or abuse of rights.

A trade mark or copyright defendant may object to an injunction on the following grounds:

• common defences;
• delays;
• equity issues;
• lack of proof; and
• abuse of rights.

As for specific defences, the defendant may plead:

• failure to register;
• lack of use;
• priority; and
• exceptions.

Trade mark or copyright holders can seek various monetary remedies to be compensated for damages caused by the infringement of their rights. Some of the monetary remedies available are:

• actual damages;
• accounting and/or restitution of profits;
• increased damages for intentional infringement;
• damages enhanced by the use of a counterfeit trade mark; and
• statutory damages.

The judge has discretion to order remedies. Please refer to 10.1 Injunctive Remedies.

In Argentina, there are specific rules and restrictions on the type and amount of damages awarded in trade mark or copyright infringement cases. Damages are calculated based on the actual loss suffered by the trade mark or copyright owner, and different methods are applied to calculate damages, such as lost sales, decreased reputation, and lost business opportunities.

Some of the most important rules and restrictions are:

• actual damages;
• damages;
• damage limit;
• interests; and
• costs.

As for the way in which damages are calculated, different methods are used, such as:

• lost sales method;
• reputation decline method;
• lost business opportunity method; and
• profit accounting method.

The responsibility to pay the costs of litigation for trade mark and copyright claims is determined in accordance with the rules of the National Civil and Commercial Procedure Code and the Trade Mark and Designation Law.

• Litigation costs: Litigation costs include court fees, expenses and attorneys’ fees. Generally, the party that loses the litigation is responsible for paying the costs of the litigation, including the prevailing party attorneys’ fees.
• Reimbursement of attorney fees: In Argentina, the losing party is required to reimburse the prevailing party for attorneys’ fees, as long as the prevailing party has demonstrated that it has incurred reasonable and necessary expenses to defend its rights.
• Transfer of fees: Fee transfer is granted when the prevailing party has demonstrated that it has incurred reasonable and necessary expenses to defend its rights, and the losing party has failed to demonstrate that the expenses incurred by the winning party are excessive or unjustified.
• Circumstances for the transfer of fees: Fare transfer is granted in the following circumstances:
1. when the winning party has demonstrated that it has incurred reasonable and necessary expenses to defend its rights;
2. when the losing party has not been able to demonstrate that the expenses incurred by the winning party are excessive or unjustified;
3. when the losing party has acted in bad faith or with negligence in the litigation; and
4. when the winning party has obtained a favourable ruling in the dispute.
• Rate transfer amounts: The amounts of the fee transfer are determined in accordance with the rules of the National Civil and Commercial Procedure Code and the Trade Mark and Designation Law. Generally, fee transfer amounts are calculated as a percentage of the judgment amount or claim value.
• Exceptions: There are exceptions to the general rule that the losing party must reimburse the prevailing party for attorneys’ fees. For example, if the losing party is an individual or legal entity that does not have sufficient resources to pay the costs of litigation, the judge may decide that fee shifting does not apply.

The owner of a trade mark or copyright may seek relief without notice from the defendant in certain circumstances, such as when injunctive relief is requested. However, in general, prior notification to the defendant is required, which may be in person, by mail or by telegram, and must contain the elements established in the National Civil and Commercial Procedure Code.

• Precautionary measures: The owner of a trade mark or copyright may request precautionary measures without prior notice to the defendant, as long as the requirements established in the National Civil and Commercial Procedure Code are met. Injunctive measures may include suspension of production or distribution of products that infringe the trade mark or copyright, seizure of goods that infringe the trade mark or copyright, or prohibition of use of the trade mark or copyright.
• Prior notification: Generally, prior notice to the defendant is required before seeking relief. Prior notification must contain the following elements:
1. identification of the owner of the trade mark or copyright;
2. the description of the trade mark or copyright infringed;
3. the identification of the defendant and their address;
4. the description of the violation and the damages caused; and
5. the request to cease and desist from the violation.
• Type of notification: Prior notification can be:
1. personal notification – the notification is made personally to the defendant, through a judicial officer or a notary;
2. notification by email – notification is made by certified email, with return receipt requested; or
3. notification by telegram – notification is made by telegram, with acknowledgment of receipt.
• Circumstances for notification: Prior notification is required in the following circumstances:
1. when reparation is requested for infringement of a trade mark or copyright;
2. when the suspension of the production or distribution of products that infringe the brand or copyright is requested; or
3. when the seizure of merchandise that infringes the trade mark or copyright is requested.
• Exceptions: There are exceptions to the general rule of prior notification, such as:
1. when the defendant is an unknown person or their address is not known;
2. when prior notification may cause irreparable damage to the owner of the trade mark or copyright; an d
3. when the violation is flagrant and immediate action is required to avoid irreparable damages.

Argentina provides for customs embargo on counterfeits and parallel imports. The relevant process is described below.

• The Law on Trade Marks and Designations (Law No 22,362) establishes that the owner of a trade mark can request customs seizure of goods that infringe their trade mark.
• Customs Regulations: The Customs Regulations (Decree No 1001/2018) establishes the procedures for the customs seizure of goods that infringe intellectual property rights, through the Customs Alert System.

The Customs Entry Alert is a system implemented by the Customs Collection and Control Agency (ARCA) in Argentina, which allows registered trade mark owners to receive information about imported merchandise that bears their brand before they are released into the market by the customs officials. This gives them the opportunity to anticipate the entry of counterfeit products and obtain valuable information on parallel imports of genuine merchandise.

Once the trade mark is registered with the Alert Entry System, the merchandise identified with the trade mark is automatically blocked by Customs for three days to allow the trade mark owner to inspect the same. The owner of the trade mark and the persons authorised by them are exempt from the aforementioned automatic blocking.

To register in the system, trade mark owners must complete Form OM 2270 and submit the same to the Customs Trade Mark Fraud Division, along with the necessary documentation, such as the trade mark registration certificate, power of attorney to an authorised third party, and the ID of the owner and representative, among others.

Registration in the system has a validity period of two years, extendable for similar periods at the request of the interested party. Once this period has expired, the trade mark in question must be renewed by its owner and/or representative within 30 days prior to its expiry.

The Customs Alert Entry System has proven to be effective in the fight against counterfeiting and parallel imports, as it allows trade mark owners to take measures to protect their rights and prevent counterfeit products from entering the country.

Decisions for infringement of rights and/or author’s rights may be appealed.

The competent body for the filing of appeals in this matter is the National Court of Appeals in Federal Civil and Commercial Matters.

The appeal must be filed with the judge or court that issued the contested judgment within ten working days of the official notification of the same.

In Argentina, you can appeal against:

• final judgments;
• interlocutory decisions; and
• decrees

As long as there is capacity to appeal, legitimate interest and the reasons for the appeal are expressed.

The resolution time can vary in each particular case and depending on the complexities of the matter, and sn average of between 12 and 18 months is estimated.

An important issue that occurred recently in Argentina is that the concept of “reproduction in public spaces” of works registered in copyright was amended, now considering that music or films played at a private event, party, disco or hotel should not pay copyright tax to the collective management society that is the Argentine Society of Music Authors and Composers (SADAIC), since it is considered a private sphere and not a public one as it was considered before.

In Argentina there is still no law that regulates artificial intelligence; however there are many bills under analysis.

Jurisprudence from other countries will be cited in the event that there is no Argentine judicial ruling that applies to the case. In any case, the latter is not binding.

In connection with e-commerce, it is useful to mention the case of MercadoLibre, an e-commerce platform for buying and selling products and services, by which trade marks, copyrights or industrial models and designs may be included in their monitor system granting protection so as to ensure to the trade mark owner that no one, but its official store, commercialises the products within the platform, also preventing the sale of counterfeited goods.

Another example is Youtube; the videos that are published on the platform must not violate copyright and in case this happens, the published video is automatically deleted.