Update on IP Laws in Argentina – Interview With Ricardo E. Amigo – the Patagonia Issue – Changes in the Opposition Procedure – Publication of the Book “Marken. Recht. Einfach.” – Happy Holidays! – Episode 159 – IP Fridays Podcast

My co-host Ken Suzan and I are welcoming you to the last edition #159 of IP Fridays in the year 2024 before the holiday season. We wish you all happy holidays and a successful year 2025!

Our interview guest Ricardo Amigo is an IP lawyer in Argentina and will give us an update of the recent changes of the trademark law including the new Patagonia issue, the new trademark opposition procedure and much more. You can find the profiles of Ricardo here:

https://bertonmoreno.com.ar/ricardo-e-amigo-en

https://www.linkedin.com/in/ricardo-e-amigo-2b97467

Before we jump into this interview, I have news for you!

First of all, my book “Marken. Recht. Einfach.” (translated into trademark law made simple) on trademarks will be published in March 2025. Many entrepreneurs and decision-makers feel overwhelmed by trademark law and make unnecessarily expensive mistakes – often out of ignorance. I am changing that with my book. I explain trademark law to the readers in an understandable way, without legalese, and show the readers how to recognize risks at an early stage and how to protect and enforce their trademarks securely. My knowledge from over 20 years of experience in this field will help the readers to make the right decisions with confidence. The link to the book is in the show notes (https://amzn.to/3D6IDKe, affiliate link).

The European Patent Office has released its updated Guidelines for Examination, set to take effect on March 1, 2025. These revisions incorporate recent legal developments, user feedback, and the latest case law to ensure greater clarity and consistency in patent examination. By refining procedures and clarifying key points, the EPO aims to improve user experience and enhance the quality of granted patents. Users are encouraged to review the changes, as the Guidelines serve as an essential reference for navigating the European patent system.

The United States Patent and Trademark Office (USPTO) has announced changes to its patent-related fees, effective January 19. These updates will impact various patent-related services, including filing, search, examination, and maintenance fees. The adjustments aim to reflect current cost recovery requirements and continue supporting the high quality of the U.S. patent system. Stakeholders should review the new fee schedule to ensure compliance and budget accordingly for upcoming filings and maintenance activities.

The European Union Intellectual Property Office (EUIPO) has released a new report on the state of online piracy and copyright infringement in Europe, revealing that while overall piracy rates have declined, challenges persist. In particular, TV content accounts for half of all digital piracy, with viewers tuning into illegal TV content five times per month. To address these issues, the report emphasizes the importance of ongoing enforcement efforts, consumer education, and the availability of legal, affordable, and high-quality content. It also highlights the need for international collaboration to protect creators’ rights and nurture a healthy digital content market.

Now let us jump into the interview with Ricardo Amigo with his update on the IP laws in Argentina!

In this episode of the IP Friday’s podcast, intellectual property expert Ricardo Amigo, a partner at the Berton Moreno IP law firm in Buenos Aires, Argentina, provided insights into significant developments and best practices in Argentine trademark law. With over three decades of experience in IP, Amigo advises both local and international clients across a wide spectrum of industries. His areas of expertise include trademarks—both prosecution and litigation—as well as copyrights, industrial models, designs, patents, genetically modified organisms, biotechnology, and entertainment law. He is actively involved in professional associations such as the International Trademark Association, including its famous and well-known marks committee, and has academic credentials from the University of Buenos Aires and the Franklin Pierce Law Center’s IP Summer Institute.

A central topic of the interview focused on a recent decision by the Argentine government to seek recognition of the term “patagonia” as an emblem under Article 6ter of the Paris Convention. The World Intellectual Property Organization’s recognition of this emblem, granted on September 30, 2023, has broad implications for trademark owners. In practice, since that date the Argentine trademark office has been rejecting all new applications containing the word “patagonia,” regardless of whether the applicant already owns a related mark. This situation puts established rights holders in a difficult position, with the only viable remedy being to challenge the decision in court. Amigo believes that, eventually, judicial rulings may force the Argentine trademark office to reconsider its stance, but warns that such a legal battle could span several years.

Beyond these recent developments, Amigo emphasized the importance of thorough preparation before seeking trademark protection in Argentina. He recommends conducting comprehensive searches—identical, phonetic, and online—prior to filing an application. Many trademarks remain unregistered but are in active use, sometimes only on social media, so researching both official registries and the broader internet is crucial. Although unregistered trademarks may sometimes be enforced through the courts, the Argentine IP system, as an attribution-based one, places far more weight on registered marks. Securing a trademark registration ensures a stronger position when it comes to enforcement and can significantly improve the chances of obtaining injunctions against infringers.

Amigo also discussed how the trademark opposition system in Argentina changed in 2018. Historically, an opposition would block the registration and require the applicant to pursue negotiations, mediation, and potentially lengthy court proceedings. Under the revised system, the burden has shifted more to the opponent. After a brief negotiation window, the opponent must ratify and provide additional arguments to the trademark office, leading to an administrative ruling rather than an immediate judicial case. This structural shift helps deter ill-founded oppositions and speeds up resolution times.

In terms of maintaining rights, trademark owners in Argentina must declare use of their marks every five years and upon renewal. While the trademark office does not routinely verify the veracity of such declarations, use is essential for sustaining protection. Amigo also noted that the law now allows for partial cancellations: trademarks can be canceled for non-use of specific goods or services, although related goods may be considered a valid defense if the mark is used for them.

Well-known trademarks, although not formally categorized in Argentine law, have long enjoyed judicial protection. Courts recognize and safeguard famous marks against unauthorized registrations or use, even if they are not registered. Nevertheless, Amigo recommends that owners of well-known marks should not rely solely on fame. Registering and using marks in the relevant classes of goods and services provides a stronger foundation for enforcement, whether through negotiations or legal actions.

In summary, Amigo’s guidance for foreign and local businesses includes conducting careful pre-filing research, ensuring timely use and maintenance of marks, and understanding the complexities of Argentina’s evolving legal landscape. His advice underscores the importance of proactive IP strategies, from diligent searches to securing rights through registration, thereby providing trademark owners with a more secure footing in the Argentine market.

Here is the transcript:

Kenneth Suzan:
Our guest today on the IP Friday’s podcast is Ricardo Amigo. Ricardo is a partner at the Berton Moreno IP law firm located in Buenos Aires, Argentina, and has been working as a lawyer specializing in IP since 1989.

Ricardo represents local and foreign clients alike in almost all industries and has broad experience in trademark law—both prosecution and litigation—as well as copyrights, industrial models and designs, patents, genetically modified organisms, biotechnology, and entertainment law issues. He is a member of the International Trademark Association, including its famous and well-known marks committee, the Argentine Association of Industrial Property Agents, and the Coligio Publico de Abigados de la Capital Federal.

Ricardo graduated as a lawyer from the University of Buenos Aires in 1994 and attended the Intellectual Property Summer Institute at Franklin Pierce Law Center in 1996.

Welcome, Ricardo, to the IP Friday’s podcast.

Ricardo Amigo:
Thank you, Ken. Thank you very much for inviting me.

Kenneth Suzan:
Excellent, Ricardo. So I’ve heard there have been some recent developments in trademark law in Argentina in the last year. Can you share some information with our listeners?

Ricardo Amigo:
Yes, sure. The most relevant new issue that affects trademark rights in Argentina is that the Argentine government applied in 2023 for the term “patagonia” as an emblem under Article 6ter of the Paris Convention. On September 30, 2023, the World Intellectual Property Organization recognized the emblem “patagonia” in favor of the Argentine government.

This is a very big issue for many trademark owners in Argentina who have acquired rights over trademarks that include the term “patagonia.” Since the emblem’s recognition, the Argentine trademark office has been rejecting all new trademark applications including “patagonia.” Even if you already own a “patagonia” mark and try to file a new design or variation, it is automatically rejected.

This situation is disturbing for trademark owners—local companies, Argentine individuals, US companies—basically everyone. We are dealing with acquired trademark rights here.

Kenneth Suzan:
Wow. Are there any legal remedies that trademark owners have so they can fight back, or do they have to live with this ruling?

Ricardo Amigo:
When the trademark office issues an official action rejecting a trademark with “patagonia,” you can file an answer with all the arguments at hand, including that you already have an acquired right. But the trademark office won’t consider these arguments and automatically rejects the application.

The only legal remedy would be to go to court and seek to have the administrative ruling reversed. You would argue that it’s unconstitutional because you already have property rights recognized under the Argentine constitution. We don’t know how the first ruling will go, but eventually I believe judges may rule in favor of trademark owners, forcing the trademark office to change its stance.

Kenneth Suzan:
We’ll have to keep an eye on that. Do you think a ruling might come out in the next year or two?

Ricardo Amigo:
No, it will take longer. Complaints were filed in 2024, and I expect at least four years until the first instance ruling, with the potential for appeals all the way to the Supreme Court. We’re talking about at least seven or eight years until we have a final ruling. Unfortunately, that’s the current situation in Argentina.

Kenneth Suzan:
We’ll certainly monitor that. Let’s shift topics. What do you consider the main issues that a trademark owner should address when seeking protection in Argentina? Any best practices?

Ricardo Amigo:
First of all, don’t use an emblem as a trademark. For any foreign company seeking trademark protection, it’s crucial to conduct a search—at least an identical search in the class of interest, and if possible a full phonetic search. This helps you find both identical and confusingly similar marks.

Given today’s importance of social media, I also recommend conducting an internet and social media search. Many trademarks in Argentina are used but not registered. You don’t want to apply for a mark, start using it, and then face a claim from a third party claiming prior unregistered use. So, searches in the registry and online are both very important.

Kenneth Suzan:
You have many years of experience with trademark enforcement. Is it important to obtain a registration in Argentina to enforce trademark rights there?

Ricardo Amigo:
Yes, Argentina uses an attribution system where ownership and the right to exclusive use are obtained through registration. Courts have protected unregistered marks based on notoriety and evidence of use, but having a registered mark puts you in a much stronger position to enforce your rights and obtain injunctions. Without registration, it’s much harder and you need to prove extensive use.

Kenneth Suzan:
The trademark opposition system in Argentina was modified a few years ago. What changes can you share with us?

Ricardo Amigo:
Before 2018, when an opposition was filed, the application was blocked. The applicant had to negotiate, attempt mediation, and, if unresolved, go to court. This put the burden on the applicant.

Under the new system, after the opposition is filed, there is a brief negotiation period of 90 days. Then the opponent must ratify the opposition and provide additional arguments. If the opponent doesn’t ratify, the opposition falls. If they do, it leads to administrative proceedings before the trademark office rather than a court action. Both sides present arguments and evidence. If the trademark office rules against the applicant, they can appeal directly to the Court of Appeals.

This system shifts the burden to the opponent and reduces ill-founded oppositions. It also speeds up the process compared to the old system.

Kenneth Suzan:
What about trademark renewals in Argentina? Do you have to declare or prove use to keep a registration alive?

Ricardo Amigo:
Yes. You must file an affidavit under oath declaring that the trademark was used in the last five years. The trademark office doesn’t examine the truth of the declaration, but you need this to renew. Also, you must file a mid-term declaration of use after five years of registration. This helps prevent cancellations for non-use and strengthens your position against third parties.

Kenneth Suzan:
Can a trademark be partially cancelled for lack of use?

Ricardo Amigo:
Yes, under the new law. Previously, a cancellation action cancelled the entire mark. Now, a third party with a legitimate interest can seek partial cancellation for certain goods or services. You can defend against this by proving use of related goods or services, even if not exactly those specified. Defining what counts as “related” is complex and case-specific.

Kenneth Suzan:
What about well-known brands? How are they protected in Argentina?

Ricardo Amigo:
Well-known brands are not specially categorized in the Argentine law, but courts have long recognized their protection. Even without prior registration, courts have granted rights to owners of famous marks when someone tries to register or use them without authorization.

That said, it’s always better to register the trademark in the relevant classes before entering the market. Don’t rely solely on fame. Have your trademark registered to put yourself in a better position when dealing with potential infringers.

Kenneth Suzan:
Ricardo, thank you for sharing your insights into Argentine trademark law. We appreciate your time on the IP Friday’s podcast.

Ricardo Amigo:
Thank you very much, Ken.