Immoral and scandalous trademarks
In the Argentine Trademark Bulletin No. 5663, it was published Provision DI-2024-141-APN-DNM#INPI, which enables the local Trademark Office (AR TMO) to object, or even reject, trademark applications, at any time during the registration proceeding, based on articles 2, paragraph “b”, and 3, paragraph “e”, of the Trademark and Trade Names Act[i].
These objections, or possible rejections, may be issued even before the publication of the application provided for in section 12 of the same law.[ii]
According to the new regulation, the AR TMO may object the registration of an applied mark “at any stage of the application proceeding”, in case it:
- Includes any element “highly or manifestly offensive, (…) in line with the principles of respect for human dignity and the promotion of a harmonious social environment, thereby no one can claim legitimate interest” (articles 3, paragraph “e”, and 4 of the Trademark Law[iii]);
- Reproduces “either wholly or partially, words or phrases that have ostensibly become widely used and are linked with specific renowned persons”, particularly, when any element of the applied mark is contrary to the principles of “good commercial faith and fair business practices and could, therefore, could lead to the undue exploitation of their prestige, image or reputation” (article 3, paragraph “b”, of the same Law).
This new provision establishes a legal frame for the examination policy that the AR TMO has been implementing for those cases in which, according to the Local Authority, ostensibly fall under certain registration prohibitions outlined in the Trademarks Law.
Regarding the examination criterion for applying section 3, paragraph “e”, the AR TMO applies, as alleged in the already raised office actions, a “broad interpretation of the prohibition, understanding morals and good customs as encompassing commercial good faith and/or fair business practices“.
In practice, these early objections to registration may be based on other statutory preventions, as evidenced in some of the following cases:
- Trademark Application for “QUÉ MIRÁS BOBO ANDÁ PA ALLÁ”, Serial No. 4197705, filed on December 14, 2022 by Mr. Matías Galarza, to distinguish diverse services in the field of telecommunications, included in class 38.
Without further detail, the examiner objected the registration of the applied mark, since she considered that “the sign falls in the prohibitions included in section 3, paragraph ‘e’, of Law No. 22.362“.
In this case, the objection was issued on December 20, 2022, this is, six days after the application was filed. Finally, this application was rejected, under Resolution No. 95284, dated March 23, 2023.
- Trademark Application for “LA SCALONETA”, Serial No. 4053299, to distinguish “wines”, filed on September 15, 2021 by Mr. Leonardo Nacif, rejected under Resolution No. 102732, dated March 1, 2024.
In this case, the AR TMO’s examiner objected, on August 18, 2023, the registration of the application, based on the provisions established by article 3, paragraph “e”, of Law 22.362, since the applied trademark “refers univocally to the popular noun Scaloneta” that is inspired in “the surname of the current coach of the Argentine men’s football team, [Lionel] Scaloni (…); therefore, the applicant is attempting to register and use the name of the coach, without the authorization to do so”.
- Trademark Application for “LA SCALONETA”, Serial No. 4061492, filed on October 13, 2021 by Mr. Luciano Miguel Nakis, to distinguish a wide list of goods in class 25.
On July, 17,2023, the AR TMO’s examiner raised an office action, based on the provisions established by article 3, paragraph “d”, as she considered that the applied mark “could mislead consumers as to the origin of the identified goods “; and paragraph “e”, since, according to the examiner, the sign applied for infringes “good commercial faith and/or commercial fair practices”, therefore, it is contrary to morals and good customs.
- Trademark Application for “¡NO HAY PLATA!”, Serial No. 4317967, filed on December 11, 2023, by MARENGO S.A., in class 30.
The examiner objected this application, on December 12, 2023 (twenty-four hours after the filing date), based on article 3, paragraph “e”, since the “applied sign unequivocally refers to the public expressions of the current President of the Argentine Republic“. Therefore, in the examiner’s opinion, the applied mark infringes “good commercial faith and/or fair business practices”, consequently, it is contrary to morals and good customs. On January 10, 2024, the TMO decided to reject this application, under Resolution No. 99466.
- Trademark Application for “NO HAY PLATA”, Serial No. 4319794, to distinguish various goods comprised in class 33, filed by Alejandro Isaias Brant, on December 19, 2023.
On March 18, 2024, the TMO decided to reject this application, under Resolution No. 103226, on the basis that “the intended sign could be covered by article 3, paragraph ‘e’ of Law 22.362″, as it considered that the applied mark applied contradicts “morals and good customs as it encompasses good commercial faith and/or good commercial practices”, as it “univocally refers to the statements made by the current President of the Argentine Republic”.
- Trademark Application for “NO HAY PLATA (lion logo, as shown below)”, Serial No. 4321163, filed by Paul Nahuel Oviedo, on December 26, 2023, in class 25.
On January 17, 2024, the examiner in charge objected this application, since she has considered that it is contrary to “good commercial faith and/or fair business practices”, as it “univocally refers to the public expressions pronounced by the current President of the Argentine Republic “. Finally, it was rejected on April 8, 2024, under Resolution No. 103692.
- Trademark Applications for “NO HAY PLATA”, Serial Nos. 4324388 and 4324389, filed on
January 10, 2024, by CUARTA DIMENSION PRODUCCIONES SRL, in classes 38 and 41.
On January 16, 2024, the examiner in charge objected both applications, since he considered that “the applied sign falls in the prescriptions included in article 3 paragraph ‘e’ of Law 22.362″, since it is contrary to “morals and good customs”, “good commercial faith and/or good commercial practices“, as it “refers unequivocally to the words pronounced by the current President of Argentina”.
On March 19, 2024, the TMO decided to reject these applications, under Resolutions Nos. 103241 and 103242.
- Trademark Application for “EL GRAN JUEGO DE LA SCALONETA”, Serial No. 4289415, filed on September 26, 2023 by Pablo Oscar Santamarina, in class 28.
On September 27, 2023 (twenty-four hours the filing date), the examiner in charge raised an office action based on Section 3, paragraph “h”, of the Trademark Law, since it constitutes “the name, pseudonym or portrait of a person, without his consent or that of his heirs down to the fourth degree inclusive”.
On November 1, 2023, the TMO rejected this application under Resolution No. 98027, without giving rise to its publication in the Trademark Bulletin for purposes of opposition by third parties.
In conclusion, this new provision aims to summarize, in a single regulation, the legal grounds in which the above-listed rejections or objections are based, to ensure that each and every case is decided by a singular legal parameter.
[i] Law No. 22,362 (LAW ON TRADEMARKS AND TRADE NAMES)
ARTICLE 2 – The following shall not be considered trademarks and may not be registered: (b) Names, words, signs and advertising slogans that have become of general use before the application for their registration;
ARTICLE 3 – The following may not be registered: e) Words, drawings and other signs that are contrary to morals and good customs;
[ii] ARTICLE 12 – Once the application for registration has been filed, the implementing authority shall, if all legal formalities have been completed, publish the application for one (1) day in the Trademark Gazette at the applicant’s expense.
Within thirty (30) days of publication, the National Board of Industrial Property shall conduct a search on prior records in respect of the mark that has been applied for and shall rule on its registrability.
[iii] ARTICLE 4 – Ownership of a mark and exclusivity of use are obtained through its registration. In order to be the owner of a trademark or to exercise the right to oppose its registration or use, the applicant or opponent must have a legitimate interest.
For further information please contact dmontanegro@ojambf.com
