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  • Intellectual property framework

    Overview

    Protection of intellectual property rights is required by the Federal Constitution and by several multilateral treaties. The main statutes in this area are federal statutes. However, in case of litigation, some matters are subject to federal jurisdiction, and others to provincial jurisdiction.

  • Commercial contract framework

    Overview

    Commercial contracts are governed by the Civil and Commercial Code. This code came into effect in 2015 and it replaces the previous separate Civil Code and Commercial Code. It is part of the federal legislation, but jurisdiction regarding its implementation and litigation resulting thereunder corresponds primarily to the provincial courts.

    The Civil and Commercial Code includes general provisions on contracts, which are applicable to all contractual transactions. These provisions govern matters such as the formation of contracts, offer and acceptance, possible subject matter of contracts, legal formalities, the legal effects of contracts, contract termination and others.

    In addition, the Civil and Commercial Code includes provisions applicable to specific types of contracts, such as sale agreements, leases, franchise agreements and agency agreements. More than 30 types of agreements are subject to specific provisions of this kind. These specially regulated agreements are thus subject to the general rules applicable to contracts –described above – and to the special rules applicable to the relevant type of agreement. Agreements that are not subject to special rules are nevertheless valid, and they are governed primarily by the general contract rules and – to the degree possible – by the rules applicable to analogous specially regulated contracts.

    Other laws include provisions on specific types of commercial contracts. For instance, the Copyright Law includes certain provisions of contracts related to software and to publishing; the Patent Law includes rules on license agreements; and the Insurance Law includes rules on insurance contracts. However, in all these specially regulated contracts, the general contract law rules included in the Civil and Commercial Code are also applicable.

    Commercial contracts with the federal or provincial governments or with other governmental entities are also governed by administrative law. Special rules on contracts with state entities have been included in federal or provincial laws, or have been developed by case law.

  • Copyrights

    Nature of right

    Copyright protects intellectual creations in all fields of science, art and literature. Article 1 of the Copyright Law includes a non-exhaustive list of possible intellectual works protected by copyright. These include, among others, literary and artistic works, music, architectural works and software.

    Copyright protects intellectual expressions, but not ideas. For example, the contents of a book in terms of sentences and other literary expressions are protected by copyright, but the creative idea underlying the book as a whole is not.

    Copyright results from the creation of an intellectual work. Registration is not necessary for copyright to exist, although it is necessary for the exercise of some rights by local authors. Upon creation of a protected work, copyright belongs to the original author or authors, who then may transfer their right, by contract or by the operation of certain legal rules.

    Copyright includes economic and moral rights. Economic rights consist, basically, in the exclusive right to use and exploit the protected work. The Copyright Law lists some of the elements of this exclusive right, such as the right to reproduce the relevant work, to market copies, to prepare derivative works or to have the work performed publicly.

    Moral rights include the so call "integrity right" – that is, the right to preserve the text, title and other contents of the work, even if property rights on such work have been assigned; the "paternity right," the author’s right to be named and identified as such together with the work; the "publication right," the right to decide whether the right will be published; and the "alteration right," the right to modify the work, even after it has been published. Moral rights belong to the author and they are generally non-assignable.

    Legal framework

    Copyright law is included in Law 11, 723, as amended. In addition, multiple laws and regulations govern matters such as related rights, publishers' rights and collective management societies.

    Argentina is part of the main multilateral international copyright agreements, such as the Trips Agreement, the Berne Convention and the Rome Convention. The provisions of these agreements are actively enforced by the courts.

    Duration of right

    The general rule is that copyright protection lasts for a term of seventy years, counted as of January 1 of the first year after the death of the author, as well as through the life of the author.

    In the case of work done through cooperation, the 70-year term is computed from the death of the last person who participated in the joint authorship of the work involved.

    In the case of posthumous works, the 70-year term is computed from the death of the author.

    The duration of protection of anonymous works whose copyright belongs to institutions, corporations or legal entities is 50 years from the date of publication of the work.

    Special rules on copyright duration apply to specific types of copyrightable works, such as photographs and cinematographic works.

    Ownership / licenses

    The basic rule is that ownership belongs to the author. Special rules have been developed in connection with special types of works, such as cinematographic works, derivative works and software.

    There are several types of joint ownership. It may apply to works done through cooperation, which imply a creative collaboration between different authors; to collective works, which are those created through the initiative or direction of one or more individuals, who coordinate or direct the efforts of several other individuals to achieve a joint result; and to composite works, which are the result of adding different separate works, each with a possible separate author and owner, into one final result.

    Works created by employees who have been hired for that purpose belong to the employer.

    Copyright may be subject to licenses, generally as part of broader contractual arrangements such as publishing agreements.

    Remedies for infringement

    Damages may be claimed before civil courts for all types of copyright violation. Registration of works is not necessary, except for local authors, whose rights may be suspended until registration takes place.

    It is also possible to file civil action to prevent further copyright violation, and to obtain preliminary remedies, such as injunction, in the course of civil procedures.

    Criminal remedies, particularly fines, are possible, but are not frequently applied.

  • Mask works / topographies

    Nature of right

    Mask works and topographies are not separately protected under Argentine law. They may be protected under patent law or by way of confidentiality.

    Legal framework

    Argentina has enacted no specific rules on chip protection. Although Argentina is part of the WTO and has approved the Trips Agreement, it has not yet implemented any rules on chip protection.

    The provisions on chip protection included in the Trips Agreement have not been deemed immediately applicable under Argentine law. In addition, Argentina has not ratified or implemented other multilateral treaties on chip protection, in particular the Treaty of Washington of 1989.

    Semiconductor technology, generally, and topographies, in particular, may be protected under the traditional intellectual property rules applicable to all types of technology, specially patent law and the rules on confidential information. Therefore, matters such as the duration of the relevant rights, ownership and remedies depend on the type of protection used in connection with each specific mask work or topography.

    Duration of right

    Not applicable for this jurisdiction.

    Ownership / licenses

     Not applicable for this jurisdiction.

    Remedies for infringement

    Not applicable for this jurisdiction.

  • Patents

    Nature of right

    Patents are a statutory right. The granting of patents is required by the Argentine Constitution and by different international documents, particularly the Trips Agreement. Patent rights imply an exclusive right to exploit a process or a product. The Argentine Patent Law defines the limits of these exclusive rights, on the basis of the provisions of the Trips Agreement.

    Legal framework

    Patents are governed by the Patent Law – Law 24,481, as amended. In addition, they are governed by the Trips Agreement and by the Paris Convention. Argentina is not a party to the Patent Cooperation Treaty.

    Duration of right

    The basic rule is that patents expire 20 years after the date in which the relevant patent application was filed. Argentina uses a "first to file" system, but it also applies the priority rules derived from the Paris Convention.

    Argentine law provides special rules on compulsory licenses and on patent termination due to lack of exploitation of the patented invention. Compulsory licenses may be granted in case of non-exploitation, competition law violations or sanitary emergencies, among other cases. Patent termination may result when, after a compulsory license was granted for lack of exploitation, no exploitation of the invention takes place for two years after the license was granted.

    Ownership / licenses

    Joint ownership is permissible. The Patent Law includes provisions on the exercise of patent rights by the joint owners. In addition the Civil and Commercial Code rules on joint property apply to patents.

    The Patent law includes rules on licenses. Licenses are not exclusive, unless the parties provide otherwise. Competition law rules are applicable to restrictive clauses included in license agreements.

    Remedies for infringement

    The Patent law provides both civil and criminal law remedies for cases of infringement.

    Civil remedies include the compensation of damages and termination of the infringing activities.

    A complex system of rules for preliminary remedies in patent cases is included in the Patent law. Generally, suspension of an alleged infringer's exploitation requires a preliminary procedure, with the participation of expert witnesses.

    Criminal procedures and sanctions are rare.

  • Trademarks

    Nature of right

    A trademark may consist of one or more words, with or without conceptual content, drawings, commercial symbols, monograms, engravings, prints, seals, images, stripes, color combinations, letter and number combinations, the special graphics of letters and numbers, advertisement phrases, reliefs, and any other sign with distinctive capacity.

    A trademark is normally protected by means of its registration. However, de facto trademarks, that is those that are used but not registered, are also protected in a more limited way.

    Legal framework

    Trademarks are governed by the Trademark Law – Law 22,362, as amended.

    In addition, trademarks are protected by the rules included in Trips Agreement and in the Paris Convention.

    Duration of right

    Registered trademarks are protected for a period of ten years, from the moment of registration. Trademark registration may be renewed indefinitely.

    Registration may be cancelled for lack of use during a period of five years. In addition, renewal of registration requires proof of the trademark's prior use.

    Ownership / licenses

    Ownership is acquired by means of registration. However, use of unregistered trademarks may result in certain rights for the user.

    Trademarks may be subject to joint ownership. The Trademark Law and the Civil and Commercial Code provide the rules applicable to these joint ownership relationships.

    Trademark licenses are possible. They are valid even if they are not registered with the trademark office.

    Remedies for infringement

    The Trademark Law provides both civil and criminal law remedies for cases of infringement.

    Civil remedies include the compensation of damages and the termination of the infringing activities.

    Special preliminary remedies are applicable in cases of trademark infringement. The trademark owner may obtain an injunction against the infringer, when the trademark is registered and its violation is immediately evident.

    Criminal law remedies are rarely used in practice.

  • Trade secrets

    Nature of right

    Argentine law provides protection for trade secrets and confidential information. A complex set of rules creates rights against conduct whereby access is gained illegally to confidential information, or which implies illegal use of trade secrets or confidential information or which results in the unauthorized and harmful disclosure of confidential or secret information.

    Confidential information is characterized by the fact that it is kept in a reserved manner and that it is not generally available for technicians working in the relevant technical field. Trade secrets receive a special degree of protection, particularly under criminal law.

    Legal framework

    Confidential information is governed and protected by Law 24,766. It is also protected by the Trips Agreement and by the Paris Convention.

    In addition, multiple rules and statutes protect confidential information and trade secrets. Labor law protects the confidentiality and ownership of information used in employment relationships.

    Several criminal law rules apply to special types of violations of confidentiality. In particular, disclosure of trade secrets and unfair competition by means of the illegal use or appropriation of trade secrets are subject to criminal law penalties.

    Duration of right

    Confidential information and trade secrets is protected for as long as the relevant information is kept confidential. The degree of protection diminishes if the information ceases to be objectively a secret, due to its previous disclosure or because it has been obtained independently by other parties.

    Ownership / licenses

    Ownership results from the obtention of the information, accompanied by legal or practical measures aimed at restricting access to that information by third parties. No registration requirement is applicable.

    Joint ownership is possible.

    Trade secret or know-how licenses are common and enforceable.

    Remedies for infringement

    Argentine law provides civil and criminal law remedies for cases of trade secret infringement.

    Damages caused by these violations must be compensated. It is also possible to obtain court orders requiring termination of the violation.

    Preliminary remedies include injunctions against further exploitation or disclosure of trade secrets.

    Criminal remedies are applicable in cases of disclosure of trade secrets acquired in the course of employment and other professional relationship, as well as in cases in which the violation of the rights to confidential information or trade secrets results in unfair competition.

  • Other key IP rights

    Nature of right

    Industrial designs

    Industrial models and designs are protected by special industrial property rights. An industrial model or design consists in the forms embodied in or the aspect applied to an industrial or artisan product, which confer an ornamental character to such product.

    Exclusive rights on industrial models and designs result from registration of the relevant model or design.

    Industrial designs

    Industrial designs

    Legal framework

    Industrial designs

    Industrial models and designs are protected by Decree 6673/1963, as amended. They are also protected in accordance with the Trips Agreement and the Paris Convention.

    Duration of right

    Industrial designs

    The rights derived from the registration of an industrial model or design last for a five-year period, counted from the date of filing of the relevant application. The registration may be renewed for two successive five-year period, if the owner requests such renewal.

    Ownership / licenses

    Industrial designs

    Ownership belongs to the author. There is a rebuttable presumption to the effect that the first applicant of an industrial model or design registration is the author of such industrial model or design. Joint ownership is possible, and is governed by the Civil and Commercial Code and by Decree 6673/1963 as amended.

    Industrial models or designs may be the subject matter of license agreements. No registration is necessary for the validity of these agreements.

    Remedies for infringement

    Industrial designs

    Civil and criminal law remedies are applicable in case of infringement. Civil remedies include the compensation of damages and termination of the violation.

    Preliminary injunctions and remedies are possible in accordance with general procedural rules.

    Criminal sanctions have been recently reinforced, but they are rarely applied.

  • Intellectual property in employment context

    Employees

    Special rules on employee inventions are included in the Patent Law and in the Labor Contract Law.

    There are basically three types of invention, from the perspective of employer-employee relationships. First, inventions made in technological areas for which the employee was hired as a researcher or developer belong to the employer. The employee may be entitled to a special compensation if he or she develops a patented invention which exceeds the normal scope of the employee's work. Second, inventions related to the employee's work or related to the employer's know-how or activities belong to the employee, but allow the employer to exercise an option to acquire rights over the invention. If the option is exercised, the employee is entitled to a payment reflecting the value of the invention. Third, inventions that do not fall into the two previous categories belong to the employee.

    Similar rules are applicable in the case of other types of technology or intellectual property rights. In the case of software, the law applies the “work for hire” doctrine, but allows the parties to agree to different contractual rules.

    Consultants / contractors

    The law is not explicit about the rights of consultants and contractors, who do not qualify as employees, with regard to technology and other intellectual property they develop. Generally, the parties may agree as to the rules which will apply to such rights. In the absence of a contractual framework, the technology or intellectual property generated by a consultant or contractor who was hired with the purpose of developing such items that will belong to the person paying for such work.

  • Key commercial contract considerations

    Registration of commercial agreements

    The general rule is that commercial agreements are not registered, and that their validity and effect is not subject to registration requirements. However, certain types of agreement must be registered to be effective or to have full effects against third parties. Agreements subject to registration include business association agreements, certain publishing agreements, certain chattel mortgages and certain agreements related to real estate. International transfer of technology agreements are subject to registration for tax purposes.

    Recognized language of commercial agreements

    Agreements are generally entered in Spanish. However, it is legally possible to enter agreements written in other languages. These agreements must be translated when presented in court. Spanish language may be necessary in consumer transactions.

    Country-specific issues for online content

    Argentina has ratified the WIPO conventions applicable online content and practices. However, enforcement of these conventions is weak.

    Enforceability of online/clickwrap/shrinkwrap terms

    The general rule is that acceptance of terms included in online, click wrap or shrink wrap elements is valid and effective, provided such acceptance is clearly stated and applies to terms that were known to the person giving the acceptance. However, several rules may limit the effects of agreements entered by these mechanisms, particularly consumer protection rules and rules on adhesion contracts.

    Governing law

    The basic rule is that the parties may agree as to the law that will govern their contractual rights and as to the applicable jurisdiction in case of dispute. This freedom of election is subject to several limitations. Non-Argentine law will not be enforced in Argentine courts if it  is contrary to Argentine public policy. Also, certain matters are necessarily governed by Argentine law. For example, if a business association is created in Argentina, its organization and other corporate aspects will be governed by Argentine law. Decisions made by non-Argentine courts or arbitration tribunals are enforceable in Argentina only after going through a special procedure before the Argentine courts, in the context of which the decision will only be enforced if it complies with certain rules, particularly not violating Argentine public policy. In addition, certain matters – ie, deciding the validity of a patent issued in Argentina – are necessarily subject to Argentine jurisdiction.

  • Key commercial contract terms

    Enforceability of warranty disclaimers

    Argentine law provides certain warranties, generally applicable to all types of contracts implying the transfer of rights. These warranties apply, in particular, to the validity of the rights being transferred and to the fitness of the goods regarding which rights are transferred.

    The general rule is that these warranties may be limited or eliminated by agreement between the parties. However, these disclaimers are totally or partially invalid in several types of cases: if the transferor had prior knowledge of the invalidity of the transferred rights or of the deficiency of the goods involved; if the transferor is a merchant and the parties waiving his or her rights are not; and if the warranty disclaimer is included in a consumer or adhesion contract.

    Enforceability of exclusions/limitations of liability indemnification

    Exclusions or limitations of liability indemnification are valid if they meet the general conditions applicable to contractual. However, they may be unenforceable in the following cases: when they extend to willful violations or defaults, or to violations or defaults resulting from gross negligence; when they are imposed in adhesion or consumer contracts; or when they result in the violation or annulment of rights that may not be removed or limited contractually.

    Indemnification

    The basic rule under Argentine law if full indemnification of economic or moral damages caused by illegal conduct, whether that conduct constitutes a contractual or a tort violation.

    The parties are free to include contractual rules as to the extent of their indemnification obligations.

    Penalty clauses and liquidated damages clauses are acceptable, but they may be limited or amended by the courts if their terms are deemed abusive.

    In the absence of contractual provisions, the indemnification's extent will depend on circumstances such as the willful or negligent nature of the violation, foreseeability of the damages caused and the comparative fault of the parties.

    Electronic signatures

    Electronic signatures are valid and effective under Argentine law. However, certain legal effects require that the signature comply with a special certification regime.

  • Key contacts
    Guillermo Cabanellas
    Guillermo Cabanellas
    Senior Partner DLA Piper (Argentina) [email protected] T +5411 41145500 View bio

Trademarks

Legal framework

Argentina

Trademarks are governed by the Trademark Law – Law 22,362, as amended.

In addition, trademarks are protected by the rules included in Trips Agreement and in the Paris Convention.

Australia

Australian trademark law is based on the Trade Marks Act 1995 (TMA) as well as common law use-based rights which provide protection for unregistered rights under the common law tort of passing off.

Trade practices legislation, principally the Competition and Consumer Act 2010 (CCA), provides additional remedies to trademark owners of registered and unregistered trademarks.

Registered trademarks can be signified through use of the ® symbol.

Unregistered trademarks can be signified through use of the ™ symbol.

Australia became a party to the Trademark Law Treaty in 1998.

Australia became a party to the Madrid Protocol in 2001.

Austria

The Austrian Trademark Act (Markenschutzgesetz) protects registered trademarks. Non-registered trademarks, in Austria termed "signs," may have protection according to Article 9 of the Austrian Act on Unfair Competition.

Austria became a member of the Madrid Agreement in 1909 and Madrid Protocol in 1999. Austria signed the Trademark Law Treaty in 1994.

Belgium

Benelux trademarks are governed by the Benelux Convention on Intellectual Property of February 25, 2005. An update thereof will occur through the implementation of the Directive (EU) 2015/2436 of the European Parliament and of the Council of December 16, 2015 to approximate the laws of the Member States relating to trade marks. This Directive will be implemented pursuant to a Protocol signed by the Benelux member states on December 11, 2017 in the Benelux Convention on Intellectual Property and will enter into force on March 1, 2019.

In respect of European Union trademarks (EUTM), the last update occurred with Regulation (EU) 2015/2424 of the European Parliament and of the Council of December 16, 2015 amending Council Regulation (EC) No 207/2009 on the Community trade mark and Commission Regulation (EC) No 2868/95 implementing Council Regulation (EC) No 40/94 on the Community trade mark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market (Trade Marks and Designs), which came into force on March 23, 2016 and, for a number of provisions, on October 1, 2017. Most notably, it included a name change for the traditional Community trademarks (CTM) to European Union trademarks (EUTM) as well as a name change for the OHIM to EUIPO. Considering the multiple and substantial amendments, Council Regulation (EC) No 207/2009 has now been codified in Council Regulation (EC) No 2017/1001 of June 14, 2017 on the European Union trade mark.

 

Brazil

Trademarks are governed by the Federal Constitution (Article 5, XXIX) and Federal Law no. 9,279/96 (the Industrial Property Law).

Brazil is not a signatory to the Madrid Protocol.

Brazil is not a party to the Trademark Law Treaty of 1994.

Canada

The Canadian Trademarks Act codifies the common law tort of passing off and accords further rights to registered trademark owners. Owners of registered trademarks receive additional protection against use of their mark in a manner that is likely to depreciate the value of the goodwill attaching to the mark and against use by others of a confusing trademark or trade name.

All trademarks, whether registered or not, are protected under the common law tort of passing off. Protection under common law arises when the mark has acquired a reputation or goodwill in the marketplace.

Registration of a trademark is available at the federal level and grants the owner of the registered mark the exclusive right to use the mark throughout Canada in association with the goods and services in the registration.

Canadian law does not explicitly require the use of symbols to denote trademark usage. However, conventionally TM is used to signify that a mark, whether registered or unregistered, is a trademark, and ® symbolizes a registered trademark.

Canada is in the process of implementing the Madrid Protocol. Canada does not currently require the use of the International Schedule of Classes of Goods and Services, but will in the future.

Chile

Law 19,039 of Industrial Property provides general legal framework in regard to Trademarks and other Industrial Property rights.

China

China recently amended the Trademark Law, which will become effective as of November 1, 2019.

The PRC Trademark Law and its Implementing Regulations are primary legislations. Judicial interpretations issued by the Supreme People's Court also provide detailed rules in respect of application of the Trademark Law.

China became party to Paris Convention in 1985. China became member of the Madrid Agreement in 1989 and a member of the Madrid Protocol in 1995.

Colombia

Trademarks are governed by Resolution 486 of 2000 issued by CAN. Colombia became party to the Paris Convention for the Protection of Industrial Property, Protocol Relating to the Madrid Agreement Concerning the International Registration of Marks and Trademark Law Treaty (TLT).

Czech Republic

Trademarks are governed by the Trademarks Act.

Denmark

Trademarks are governed by:

  • The Trademark Act (LBK 223 26/02/2017) based on the EU Directive 2008/95/EC. The Act allows a trademark right to be obtained through registration or use
  • The Act concerning amendment of the Trademark Act and various other Acts and termination of the Act on Standardization Marks (LOV 1533 18/12/2018)
  • Council Regulation No 2015/2424 of the European Parliament and the Council amending the Community trade mark regulation
    • The Regulation only allows a trademark right to be obtained through registration
  • Council Regulation No 2015/2436 of the European Parliament and the Council to approximate the laws of the Member States relating to trademarks.

Denmark signed the Paris Convention in 1894.

Denmark has also signed the Trade Related Aspects of Intellectual Property Rights (TRIPS), the Trademark Law Treaty, the Nice Arrangement and the Madrid Agreement and Protocol.

Finland

The Finnish Trademark Act and the Finnish Trademarks Decree govern the protection of both unregistered and registered national trademarks. An unregistered trademark is protected only if it can be considered widely known among the relevant consumer group at which it is directed.

The Finnish Trademark Act is currently under revision and a Government Proposal has been given for the new amended Trademark Act in October 2018. The objective of the revision is to implement the amendments required by the EU Trademark Directive 2015/2436. In addition, the objective is the ratification of the Singapore Treaty on the Laws of Trademarks.

The Finnish Penal Code governs also trademark infringement crimes

The European Council Regulation on the European Community trademark governs the use and registration of European Community trademarks.

Finland is a member of the Madrid Protocol, Trademark Law Treaty and Singapore Treaty on the Law of Trademarks as well as a signatory of the Paris Convention, TRIPS Agreement and the Nice Agreement.

France

Trademarks are governed by Part VII of the French Intellectual Property Code including notably:

  • Law No. 64-1360 on Trademarks and Services Marks, dated December 31, 1964 and Law No. 91-7 on Trademarks and Services Marks, dated January 4, 1991 and Law No. 2014-315 Reinforcing the Fight Against Counterfeiting, dated March 11, 2014
  • EU Regulation 2015/2424 and Directive 2015/2436 on the European Union Trademark, dated December 16, 2015

France became a member of the Madrid Agreement in 1892.

France became a member of the Madrid Protocol in 1997.

France became party to the Trademark Law Treaty in 1995.

Germany

The German Trademark Act (Markengesetz) governs national trademarks and Union Trademark Regulation governs Union Trademarks. The national laws of the EU member states are harmonized to a high degree.

Germany became party to the Paris Convention in 1903, to the Madrid Agreement in 1922 and to the Madrid Protocol in 1996.

Germany became party to the Trademark Law Treaty in 2004.

Hong Kong

The Trade Marks Ordinance (Cap. 559) governs trademarks. Hong Kong is not a member of the Madrid Protocol. Following a consultation which ended in February 2015, the Intellectual Property Department proposed a roadmap in February 2017 for implementing the Madrid System in Hong Kong through the Madrid Protocol. Changes to the Trade Marks Ordinance and its subsidiary legislation will have to be made for the Madrid System, which is expected to be fully implemented in Hong Kong in 2022.

Hungary

Act 11 of 1997 on the Protection of Trademarks and Geographical Indications.

As a result of its membership of the European Union, the following law applies in Hungary:

  • The Trademark Directive

India

India is a signatory to the Madrid Protocol and the law governing trademarks in India is The Trade Marks Act 1999.

Indonesia

Law Number 20 of 2016 on Trademarks and Geographical Indication is the governing statute on trademarks. Indonesia became a signatory to the Trademark Law Treaty in 1997.

Ireland

In Ireland:

  • Irish registered trade marks are governed by the Trade Marks Act 1996 (as amended) and
  • European Union Trade Marks are governed by Regulation EU/2017/1001

Ireland ratified the Madrid protocol in 2001 and became a signatory to the Trademark Law Treaty in 1999.

Accordingly, trade marks can be registered nationally in Ireland or at a European level, which affords the registered owner protection on a pan-European basis.

For unregistered trade marks and logos, it is possible to obtain legal protection under the common law tort of passing off.

 

Israel

Trade Marks Ordinance (New Version) 1972 is the governing statute; rights in unregistered trademarks may also be enforced by means of the tort of passing off under the Commercial Torts Law 1999.

Italy

Sections 2569 to 2574 of the Italian Civil Code and the Industrial Property Code regulate the protection of trademarks.

Italy is also party of the main community and international trademark treaties and conventions, such as the Paris Convention, Madrid Agreement and Protocol, Nice Agreement, the TRIPS Agreement; Regulation No. 1001/2017/EU applies, too.

Japan

The Trademark Act (Act No. 127 of 1959) governs trademarks.

Japan joined the Madrid Protocol in 2000.

Japan joined the Trademark Law Treaty in 1997.

Luxembourg

There is no Luxembourg trademark system per se. Luxembourg is party to the Benelux Convention, and as such, Benelux trademarks are in effect in Luxembourg (alongside with EU trademarks and international trademarks designating Benelux).

Trademarks are governed by the Benelux Convention on Intellectual Property of February 25, 2005 as approved by the Law of May 16, 2006 as amended.

The  Directive (EU) 2015/2436 of the European Parliament and of the Council of 16 December 2015 to approximate the laws of the Member States relating to trademarks has been implemented in Luxembourg through the Law of November 17, 2016 and the Law of July 20, 2018 approving the Protocol amending the Benelux Convention in the field of intellectual property (short title).

Furthermore, as far as EU trademarks are concerned, Regulation (EU) 2015/2424 of the European Parliament amending Council Regulation (EC) No 207/2009 on the Community trademark and Community Regulation (EC) No 40/94 on the Community trademark, and repealing Commission Regulation (EC) No 2869/95 on the fees payable to the Office for Harmonization in the Internal Market, has now come into force. Most notably, it included a name change for the traditional Community marks to European Union marks as well as a change from the traditional OHIM to EUIPO.

Finally, the European Union trademark regime, which is applicable across all EU Member states, is regulated by Regulation (EU) 2017/1001 of the European Parliament and of the Council of June 14, 2017, Commission Delegated Regulation (EU) 2018/625 of March 5, 2018 supplementing Regulation (EU) 2017/1001 regulate the European trademark regime, which is applicable across all EU Member states and Commission Implementing Regulation (EU) 2018/626 of March 5, 2018 laying down detailed rules for implementing certain provisions of Regulation (EU) 2017/1001.

Mexico

Trademarks are governed by the Fourth Title of the Industrial Property Law (Ley de la Propiedad Industrial).

Netherlands

Benelux Convention on Intellectual Property governs trademarks.

New Zealand

The Trade Marks Act 2002 governs registered trademark rights. Registered marks are signified by the symbol ®, and the ™ symbol can be used to indicate a trader's intention to register a mark as a trademark. Trademark owners have the exclusive right to use, license or sell the trademark and can prevent others from using the same mark, or a similar mark, usually in relation to the same or similar goods and services.

The Fair Trading Act 1986 and the common law tort of "passing off" provide additional remedies to trade mark owners of registered and unregistered marks.

New Zealand is a party of the Madrid Protocol, Madrid Agreement for the Repression of False or Deceptive Indications of Source on Goods, Singapore Treaty on the Law of Trademarks, Trade Related Aspects of Intellectual Property and Nice Agreement Concerning the International Classification of Goods and Services for the Purpose of Registration of Marks.

Norway

Trademarks are governed by the Norwegian Trademark Act (No: varemerkeloven).

Norway has implemented the Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the member states relating to trademarks.

Norway has also signed the Paris Convention, the TRIPS Agreement, the Madrid Protocol and the Nice Agreement.

Poland

In Poland, a trademark owner may pursue claims on the basis of the Industrial Property Law and the Act on Combating Unfair Competition.

In the case of EU trademarks, EU Regulation 2017/1001 of June 14, 2017 on the European Union trade mark applies.

Poland is also a signatory of the Madrid Agreement (since March 18, 1991) and the Madrid Protocol (since March 4, 1997).

Portugal

Trademarks are governed by:

  • Title II, Chapter IV of the Industrial Property Code (Articles 208 to 269)
  • Regulation (EU) 2017/1001 of the European Parliament and of the Council of 14 June 2017 on the European Union trademark

Portugal became party to the Paris Convention in 1884.

Portugal became member of the Madrid Agreement in 1893.

Portugal became member of the Madrid Protocol in 1997.

Romania

Law no. 84 of March 30, 1998 on trademarks and geographical indications provides protection for registered marks.

Romania became a member of the Madrid Protocol in 1989 and to the Trademark Law Treaty in 1998.

Russia

Part IV of the Russian Civil Code governs trademarks.

Russia is a member of the Singapore Treaty and Madrid Convention and Protocol.

Saudi Arabia

With effect from 29 September 2016, the KSA adopted the GCC Trademark Law (Law No. 1/1437 of 13 Dhu'l-Hijjah 1437 H (corresponding to 29 September 2016)), and its Implementing Regulations (GCC Trademark Law). The GCC Trademark Law replaces the former KSA Trademark Law that was in place since 2002.

Note that the GCC Trademark Law does not establish a unitary registration system – it contains a single set of provisions which apply across all GCC countries, but it does not envisage a single registration or enforcement system (ie, a "GCC mark" will still require six separate, national applications). 

Singapore

Trademark registration in Singapore is governed by the Trade Marks Act (Cap. 332). It is not compulsory to register a trademark in Singapore; one may also rely on rights under the common law doctrine of "passing off" to protect a trademark.

The Singapore Treaty on the Law of Trademarks was adopted on March 27, 2006 and came into force on March 16, 2009. Singapore acceded to the Madrid Protocol on July 31, 2000, and it came into force in Singapore on October 31, 2000.

Slovak Republic

The Slovak Act No. 506/2009 Coll. on trademarks, as amended (Act on Trademarks) governs the rights and obligations relating to the legal protection of national trademarks and trademark proceedings in front of the Industrial Property Office of the Slovak Republic (Industrial Property Office).

Slovakia, as a member of the European Union, implemented EU directives on the trademarks into the Act on Trademarks. Therefore, the registration of an EU trademark in the EU register has the same effects in the territory of the Slovak Republic as if the trademark was registered in the Slovak register of trademarks. The Slovak Republic is signatory of several international agreements as well:

  • Paris Convention
  • Madrid Agreement
  • Nice Agreement
  • Trademark Law Treaty

South Korea

Protection of trademarks is governed by the TMA and the UCPA.

Spain

In Spain, the main law regulating trademark protection is the Law 17/2001 on Trademarks, recently modified by Royal Decree-Law 23/2018 (changes effective from January 14, 2019). Spanish Patents and Trademarks Office (Oficina Española de Patentes y Marcas) has the authority to grant trademarks as well as patents.

The "International System" comprises the Madrid Agreement of 1891 and the Protocol to the Madrid Agreement of 1989 administered by the World Intellectual Property Organization (WIPO). Since it is not, strictly speaking, an international registration, the applicant must designate the countries in which he wishes to obtain protection.

The European Union Trademark system provides a single registration which confers direct protection in all the Member countries of the European Union through a single application and a unitary procedure.

Sweden

The Swedish Trademark Act (2010:1877) (Varumärkeslagen) pertains to the protection of unregistered and registered Swedish trademarks. An unregistered mark is protected if it becomes known as a trademark for the goods or services provided under the mark to a significant part of the relevant public.

Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trademark pertains to the protection of registered European Union trademarks.

Sweden became member of the Madrid Protocol in 1995.

Sweden became party to the Trademark Law Treaty in 1995.

Sweden acceded the Singapore Treaty on the Law of Trademarks in 2011.

Sweden has also signed the Paris Convention, the TRIPS Agreement and the Nice Agreement.

Switzerland

Trademarks are governed by the Federal Trademark Protection Act and Federal Ordinance on Trademarks. Those two statutes were revised with effect as of January 1, 2017. In particular, the provisions concerning the indication of origin in  Switzerland were revised.

Taiwan

The Trademark Act governs trademarks. Taiwan is a member of WTO and follows the TRIPS. However, Taiwan is not a member of the Madrid Protocol.

The grant of a trademark in Taiwan is based on the registration of a trademark with the Intellectual Property Office, Ministry of Economic Affairs.

Ukraine

The trademark rights in Ukraine are regulated by the Civil Code of Ukraine dated January 16,  2003 along with the Law of Ukraine "On the Protection of Rights to Marks for Goods and Services" dated December 15, 1993. Further, Ukraine is a member to the Paris Convention for the Protection of Industrial Property, Trademark Law Treaty, the Singapore Treaty on the Law of Trademarks and the Madrid Agreement Concerning the International Registration of Marks and Madrid Protocol.

United Arab Emirates

Trademarks are governed by Federal Law No. 37 of 1992 as amended by Federal Law No. 8 of 2002 as amended (Trademark Law).

The UAE is party to the Paris Convention and the TRIPS Agreement. The UAE is not party to the Madrid Protocol.

United Kingdom

The United Kingdom became member of the Madrid Protocol in 1995.

The United Kingdom became party to the Trademark Law Treaty in 1996.

Trademarks are governed by the Trade Marks Act 1994 (UK marks) and Regulation EU/2017/1001 on the European Union Trade Mark (EUTMs), both as amended.

United States

The Lanham Act provides federal protection for unregistered and registered marks. Registered marks are signified by the symbol ®. Federal registration requires use in interstate commerce.

Common law marks are enforced by state law, and are signified by the symbol™.

State registrations are available for marks used in individual states.

The US became a member of the Madrid Protocol in 2003 and to the Trademark Law Treaty in 2009.