03 July 2009

Registering a Trademark in Argentina

When initiating any kind of commercial or business activity within Argentina, it is a good idea to protect your trademark. There are famous cases of trademark piracy here in Argentina. Here's a a recent one to illustrate this: When Starbucks first came to Argentina, they had all the normal Frappuccino offerings that are available in the US plus a few local flavors. Notible for its absence, however, was the Java Chip Frappuccino.

When I inquired with one of the store managers why the flavor wasn't available, I was told that someone else had beat them to registering their Java Chip trademark. Someone who had knowledge of Starbucks plan of expansion in Argentina registered their trademark first and was requesting that Starbucks pay them a fee to buy the trademark. A few months later Starbucks introduced the "Dark Mocha" Frappuccino, which is identical in every way except that it isn't called "Java Chip". So, it seems there was no agreement on pricing to buy the Java Chip name.

Registering Your Trademark
The process to register your trademark is a multistep process. Your trademark attorney should first do a search of the registry to find any names that are already registered that are similar to the name you are looking to register. Assuming no one has a name registered that is identical, you can proceed with the registration of your trademark.

The first step is to file for a registration. This involves filling out a form where you declare a class for the registration. There are 11 different classes for services and 34 classes of products. It may be necessary to register in multiple classes to fully protect your products/services. After you have chosen the classes to be used for registration, the request is filed with the INPI (Instituto Nacional de la Propiedad Industrial) and they will approve or deny the filing. The filing can include both names and drawings in black and white. The whole process will take about 60 days.

The second phase is publication. After approval has been given by INPI, the trademark must be published in the Trademark Bulletin. Other registrants will have 30 days to oppose the registration. Opposition of just one trademark holder is enough to deny registration. If no one opposes the registration, the trademark will be granted.

Assuming someone opposes the registration (which is very likley and has happened in every single trademark I have registered), the only way to register the trademark is to convince the trademark holder who has opposed the registration to withdraw their complaint with the INPI. This is done first through negotation. Usually an offer can be made to limit the use of the new registration in order to avoid it causing confusion with an existing trade name.

If negotations have been unsuccessful, the registrant can request (and pay for) a mediation between the two parties. The goal is to work with a mediator to find some common ground and try to convince the opposing party to withdraw their opposition.

The final option available is the initation of legal action against the opposing party. The registrant can request the court to rule on the valididity of the opposition. A lawsuit of this type can take up to three years to resolve and if the court rules against the plaintiff, the defendant's legal fees must be paid by the plaintiff.

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