Argentina | Disposition for offensive trademarks or advertising names, words, signs or phrases that have come into general use, prior to their application for registration.
In view of the numerous trademark applications before INPI Argentina in recent times, with the ‘offensive phrases’ or ‘advertising phrases’ that entered the public domain, citing for example: "que miras bobo", which was issued by Lionel Messi in an interview during the last World Cup in Qatar, and by the current Argentinean president Javier Milei during his campaign as "las fuerzas del cielo" or "viva la libertad carajo".
That said, the administration of the National Institute of Industrial Property (INPI), published in its national bulletin the following provision, which we share with you.
Argentine Republic - National Executive Branch
YEAR OF THE DEFENCE OF LIFE, LIBERTY AND PROPERTY
Provision:
Number: DI-2024-40071490-APN-DNM_INPI
Reference: ANTICIPATED VIEW - PHRASES THAT HAVE PASSED INTO GENERAL USE AND HIGHLY OFFENSIVE - HIGHLY OFFENSIVE
IN VIEW OF the Trademarks and Designations Law No. 22.362 and Regulatory Decree No. 242 dated April 1, 2019 and;
WHEREAS:
That the registration procedure of a trademark application is divided into three main stages, the first one aimed at verifying the legal formalities of the application; the second one in which the intended sign is published in the Trademark Bulletin and; a third one, in which its registrability is assessed by verifying compliance with the respective requirements.
That among the impediments to registration is the prohibition to register signs or sets of signs that are ‘highly or manifestly offensive’, in view of the respect for human dignity and the preservation of a harmonious social environment, so that no one can claim to have a legitimate interest to do so under the terms of article 4 of Law 22.362.
On the other hand, there is also a prohibition to register names, words, signs and advertising phrases that have entered into general use prior to their application for registration (article 2, paragraph b) of Law 22.362) as they do not constitute trademarks.
That, in relation to this, the registration as a trademark of signs that reproduce in whole or in part words or phrases that have ostensibly entered into general use and are associated with certain personalities is also contrary to good commercial faith and sound business practices and could therefore lead to a possible undue exploitation of their prestige, image or reputation, which is why the registration body is called upon to prevent it.
That, as a consequence of the particular characteristics of the signs mentioned in the preceding paragraphs, it has been considered prudent in such cases - and exceptionally - to file an observation at the first opportunity in which an application for registration of a sign falling under such assumptions is detected.
That, the early detection and assessment of registrability of trademark applications that could infringe these principles prevents the consolidation of such signs in the market, maintains the integrity of the trademark system, promotes fair competition and encourages the exercise of sound practices that should govern commerce.
That, both economically and legally, the continuation of an unnecessary procedure when a situation such as those mentioned in the previous recitals arises is not worthwhile, and therefore, after hearing the applicant - in the event that the application falls under any of these circumstances - the enforcement authority may immediately reject the continuation of the processing of the application, thus avoiding an administrative waste of resources.
That the Legal Counsel of the Directorate has taken the intervention of his competence on the legality of the act herein issued in compliance with the requirements of the Trademark Law No. 22.362.
That the present is issued in use of the powers conferred by Decree No. 242/19 and INPI Resolution No. P-12/24.
Therefore,
THE NATIONAL DIRECTOR OF TRADE MARKS
PROVIDES:
ARTICLE 1: In those cases in which a claim for registration of a sign that may be highly or manifestly offensive is detected, at any stage of the application process, the applicant shall be heard under the terms of Sections 3, paragraph e) and 4 of Law 22.362.
SECTION 2: In those cases in which the registration as a trademark of a name, word, sign or advertising phrase that have entered into general use prior to their application for registration is detected, and reproduce in whole or in part words or phrases that are ostensibly associated with certain personalities, at any stage of the application process, the interested party shall be heard under the terms of Section 2, paragraph b) of Law 22.362.
SECTION 3: In any of the cases of the preceding sections, once the hearing has been answered, or once the term to do so has expired, the corresponding legal decision shall be taken immediately.
ARTICLE 4º: Register, publish for the term of one (1) day in the Trademark Bulletin and file.
