As of April 24, 2024, new criteria apply in Argentina for the analysis of trademarks applied for that are associated with recognized personalities and signs considered highly offensive.
The National Institute of Industrial Property (INPI) issued Provision DI-2024-141-APN-DNM#INPI (hereinafter, the Provision) which defines new scopes of articles 2, paragraph b and 4 of the Trademark and Designations Law No. 22,362. 22.362.
The new provision, which came into effect on April 24, 2024, regulates the new procedure of the TMO when faced with a trademark application requesting: 1) a highly offensive sign or; 2) a sign that totally or partially reproduces phrases or words that are associated with certain prominent personalities of society.
For this purpose, the regulation provides that:
– In the case of trademark applications seeking the registration of signs that could be “highly or manifestly offensive”, the applicant will be given an office action at any stage of the proceedings, without the need to wait for the substantive examination stage (Art. 1).
– In order to protect good commercial faith and fair trade practices the INPI establishes that signs that totally or partially reproduce words or phrases that are associated with certain personalities and that have entered into general use prior to the filing of the application will not be registrable as trademarks (Art. 2).
Through this new provision, the Argentine Trademark Office intends to prevent the undue exploitation of other’s prestige, and to avoid the consolidation of signs that infringe good faith and fair trade practices in the market.
The new system establishes a simplified procedure, in which the TMO will issue an office action at the first opportunity where it detects that a trademark application falls under these cases, in order to avoid the disadvantageous continuation of an unnecessary procedure.
The Provision aims to provide a legal framework for a series of denial resolutions issued by the National Trademark Office in connection with the celebration of the FIFA World Cup Qatar 2022.
Regarding our country, multiple trademark applications were filed by unauthorized third parties seeking to monopolize the iconic phrase “QUE MIRA BOBO, ANDA PA ALLA”, which was popularized by the professional football player Lionel Messi in the above mentioned soccer World Cup. These applications were denied in an extraordinarily fast manner by the INPI based on Article 3, Clause e) of Law 22.362.
Thus, the first application filed on 12/12/2022 received its denial resolution in less than 45 days.
Recently, in a similar case, the INPI has highlighted that “We must emphasize that the protection provided by the IP regulatory framework is directly related to the prohibition of the exploitation of others, either in terms of authorship or in terms of trajectory or reputation. Thus, the sign applied for is intimately associated with the idol of the last and recent world championship won by our country, LIONEL MESSI, so it is undoubtedly contrary to morals and/or good customs -good commercial faith or good business practices- to claim its registration as a trademark without proving any right to do so, only to take advantage or parasite the fame of the mentioned public figure and his phrase in the context of its issuance, with the sole mission of attracting customers, which is imperative for this agency to avoid obtaining a commercial gain by means of UNDUE APPROPRIATION granting state monopoly”. (*). (*)
Consequently, the aforementioned indicates that the National Institute of Industrial Property reaffirms its role in preventing the exploitation of the popularity of others, by establishing that it is contrary to morals and good customs and lays the groundwork for a procedure that seeks to reduce bureaucratic delays, speeding up the processing of trademark applications.
In summary, the recent provision marks an important advancement in our country, by establishing a clear framework for the treatment of trademark applications in violation of the trademark law, promoting fair competition by means of its immediate rejection.
In this way, the National Trademark Office will prevent unnecessary wastage of administrative resources, in line with the search for an efficient and fair management in the field of intellectual property.
(*) Denial Resolution in trademark application under Serial No. 4306605.
