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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

Nature of right

Argentina

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.

Australia

Trademarks in Australia are protectable on a first to use or register-based system. Both registered and unregistered marks can be protected. A registered trademark is a sign used to distinguish the goods and services of one trader from those of another.

A sign can be a word, phrase, letter, number, sound, smell, shape, logo, picture, aspect of packaging or a combination of these.

Austria

Trademarks can be any sign that can be represented graphically, in particular words, including personal names, designs, letters, numerals and the shape or style of the goods, provided that such signs are capable of distinguishing the goods or services of one enterprise from those of other enterprises. Three-dimensional marks, color marks and sound marks are also protectable, if sufficiently graphically displayable/displayed. Haptic or olfactory marks and national emblems are not protectable as trademarks in Austria.

Belgium

A registered trademark provides its owner with an exclusive right to prevent any third party, without its consent, from:

  • Using in business a sign that is identical to the trademark for goods or services that are identical to those for which the trademark is registered
  • Using in business a sign that is identical or similar to the trademark and because the goods or services covered by the trademark and the sign are identical or similar, there is a risk of confusion in the mind of the public due to the association between the sign and the trademark
  • Using in business a sign that is identical or similar to the trademark for goods or services which are not similar to those for which the trademark is registered, where the trademark enjoys a reputation in the Benelux territory and where use of the sign without due cause would take unfair advantage of or be detrimental to the distinctive character or the reputation associated with the owner of the trademark
  • Using a sign for purposes other than those of distinguishing the goods or services, where use of the sign without due cause would take unfair advantage of or be detrimental to the distinctive character or the reputation of the owner of the trademark

Any signs (such as, but not limited to, names, designs, imprints, stamps, letters, numerals, shapes of goods or their packaging, colors and slogans) that are able to be represented graphically and used to distinguish the goods or services of a company are eligible to be registered as individual trademarks. However, signs solely comprising a shape that is imposed by the very nature of a product, which gives the product substantial value, or which is necessary for obtaining a technical result, may not be registered as trademarks.

In order to be registered, the sign must have a sufficient "distinctive character." Such distinctive quality is not a constant but a variable. This means that a rather weak trademark at the time of registration may become a strong trademark through intensive advertising and surveillance, or, conversely and failing sufficient advertising and surveillance, that a strong trademark may become a weak trademark with a smaller scope of protection or even become the normal commercial description of a product or service for which it is registered as a result of the activity or inactivity of its owner, in which case the trademark shall be declared as lapsed.

Brazil

Distinctive signals visually perceptible, not otherwise included within the legal prohibitions, are registerable as trademarks.

Canada

A trademark is any word, phrase, symbol, design or sound used to distinguish the goods or services manufactured or performed by a trader from the goods or services manufactured or performed by others. Protection is also afforded to the shape, container, wrapping or mode of packaging of goods in the form of a distinguishing guise.

The new Combating Counterfeit Products Act (once fully implemented) will do away with distinguishing guises and provide for a unified definition of a trademark as "a sign or combination of signs that is used by a person for the purpose of distinguishing their goods or services from those of others."

Chile

Any sign that is susceptible of graphic representation able to distinguish in the market products, services or industrial or commercial establishments. Such signs may consist of words, including the names of people, letters, numbers, figurative elements such as images, graphics, symbols, combinations of colors, as well as, any combination of these signs. When the signs are not intrinsically distinctive, registration may be granted if they have acquired distinctiveness through use in the market national.

China

A trademark is defined as "any sign that distinguishes the goods of a natural person, legal person, or other organization from those of others, including any word, device, letter, number, three-dimensional sign, and color combination, sound, or the combination thereof." China uses the "first to file" system. In general, only a registered trademark enjoys protection under the Trademark Law. An unregistered trademark with prior use is protected in very limited situations.

Colombia

As per Resolution 486 of 2000, a trademark is any sign that identifies goods or services on the market. In this regard, signs that may be represented on graphics might be registered as trademarks, as well as words, images, letters, numbers, combination of colors or any combination of the signs.

In order to register the trademark, the request has to meet the following requirements:

  • File the request
  • If possible, replicate the trademark
  • Pay the corresponding fees
  • If applicable, submit the certificate of registration in other countries and
  • Fulfill other requirements established by the Colombian Law, regarding the procedure with the SIC

Ways to lose the right over the trademark

  • Cancelation of registration: The national office will cancel the registration when the trademark has not been used by at least one of the authorized officers or by the owner during the three years following the registration. Nonetheless, the owner has the possibility to prove a force majeure or an unforeseen circumstance that explains the non-use of the trademark. Moreover, the registration will be canceled when the trademark identifies more than one good or service.
  • Waiver of registration: The owner has option to waive the registry of its trademark. This right may be exercised at any time and may lie on the entire registry or on a part of it, as a single good or service represented.
  • Invalidity of registration: The national office shall invalidate the registration when:
    • it has been granted without the essential requirements
    • the sign does not fulfil the necessary conditions and
    • when it has been registered without taking into account third-party's interest
  • Expiration of registry: Registry of a trademark expires when the owner does not file the request for renewal or does not pay the corresponding fees on time

Types of trademarks

  • Regular trademarks: As mentioned above and according to Resolution 486 of the CAN, this trademark applies to any sign that identifies goods or services on the market. In this regard, signs that may be represented on graphics might be registered as trademarks, as well as words, images, letters, numbers, combination of colors or any combination of the signs. The regular trademarks are regulated as mentioned above.
  • Collective trademarks: According to Resolution 486 of the CAN, a collective trademark is: "(…) any sign that serves to distinguish the origin or any other common characteristic of goods or services from different firms that use the sign under the owner's control." Legally established associations may register collective marks to distinguish on the market the goods and services of its members. The Collective trademarks may be transferred or licensed in accordance with the rules established for these purposes by the association. In any other matter, the regulation for regular trademarks shall apply to collective trademarks.
  • Certification marks: As per Resolution 486 of 2000, a certificate mark is "sign intended to be applied to goods or services which quality or other features have been certified by the trademark owner." The registration of the certification mark shall include the code of use. For this reason, the SIC must be informed of any change of the rules for its usage. Such changes will be enforceable against third parties once the owner registers them on the corresponding registry. In any other matter, the regulation for regular trademarks shall apply to collective trademarks.

    Certification marks may be transferred or licensed only in accordance with the rules established in the code of use.

Czech Republic

Trademark may consist of any sign, including personal names, colors, designs, letters, numerals, the shape of goods or their packaging, gestures, musical trademarks etc., provided that such sign is capable of distinguishing goods or services from other goods or services.

Denmark

Trademarks cover any sign capable of being represented appropriately by use of commonly known technology, particularly words, phrases, letters, numbers, figures, illustrations, the shape of goods or of their equipment or packaging and sounds provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

Finland

A trademark can be registered for any sign, which can be represented in a graphical form. Examples of such signs include words and names, designs, the shapes of goods or of their packaging, and in some cases distinctive shades of colour. In all cases it is required that the sign is original and capable of distinguishing the commercial origin of the goods or services. The Nice Classification system for goods and services is used in the Finnish trademark system.

The owner of a trademark has the exclusive right to use the trademark commercially for the duration of the registration term. In practice, a successful infringement claim requires that a likelihood of confusion can be proven between the trademark and the infringing mark.

France

Trademarks are any sign capable of graphic representation that serves to distinguish the goods or services of a natural or legal person. A word, a sound or a picture may be protected as a trademark. Trademarks serve as an indication for the consumers of the commercial origin of the marked products or services.

Germany

Trademarks protect signs that distinguish products or services of the rights holder from those of others. Signs may include amongst others words, logos, graphics, acoustic signs, three dimensional shapes or colors.

Trademarks can be registered with the German Patent and Trademark Office or enjoy an automatic protection through use if known in trade.

National trademarks (granting protection in Germany) and EU-wide Union Trademarks exist in parallel. Union Trademarks must be registered with the European Intellectual Property Office (EUIPO, formerly OHIM).

A trademark holder has the right to exclude third parties from labeling their products with identical or similar trademarks, and from offering, marketing, using, importing or exporting such products. Identical or similar trademarks may also not be used in commercials or business documents of third parties.

Hong Kong

A trademark is a sign that distinguishes the goods and services of one trader from those of others. Typically, a trademark can be words, indications, designs, letters, characters, numerals, figurative elements, colors, sounds, smells, the shape of the goods or their packaging, or any combination of these. Such sign must be capable of being represented graphically in order to be registered as a trademark.

A registered trademark is personal property.

Hungary

Any sign that (i) can be represented in a way that the subject of the trademark can be precisely defined, and (ii) is capable of distinguishing goods or services from goods or services of others can be registered as a trademark.

Trademark protection grants exclusive right for the trademark owner to use the trademark.

On the basis of this exclusive right of use, the owner may initiate proceedings against any party who, without his or her consent, uses in its business operations in connection with goods or services:

  • A sign identical to the trademark in connection with goods and services which are identical to those specified in the specification of goods for which the trademark is registered
  • Any sign that consumers may confuse with the trademark due to the identity or similarity of the sign and the trademark, or due to the identity or similarity of the goods or services in question
  • Any sign identical or similar to the trademark, regardless of whether the goods or services that are listed in the specification of goods for which the trademark is registered are identical or not with the goods or services in connection to which the sign is used, to the extent that such trademark has a good reputation in the domestic market and the use of the sign without due cause would be detrimental to or unfairly exploit the trademark's distinctive character or reputation

India

A mark includes a device, brand, heading, label, ticket, name, signature, word, letter, numeral, shape of goods, packaging or combination of hues or any combination.

A trademark is a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others and may include shape of goods, their packaging and combination of hues. A trademark indicates a connection in the course of trade between the goods or services, as the case may be, and some person having the right as proprietor to use the mark.

A collective mark means a trademark distinguishing the goods or services of members of an association of persons which is the proprietor of the mark from those of others.

Indonesia

A trademark is a government license that confers on the owner the exclusive right to use a certain registered sign that distinguishes traded goods or services from other goods or services. Indonesia adopts the "first to file" system.

Ireland

A trade mark enables its owner to identify its goods or services and to distinguish them from other goods and services in the relevant market.

It is possible to obtain trade mark protection for words, phrases, symbols, designs, logos, letters, numerals, shapes, colors, packaging and sounds or a combination, which differentiate the origin of the goods or services of one party from the goods or services of another.

A registered trade mark owner can, subject to certain limitations, claim exclusivity in the trade mark and prevent unauthorised use of the trade mark.

Israel

There is protection for registered trademarks and unregistered well-known trademarks. A trademark may be comprised of letters, numerals, words, devices or other signs, or combinations thereof, whether two-dimensional or three-dimensional, and is used to identify and distinguish the source of the goods or services of one party from those of others.

Italy

Trademark protection is available for signs that can be represented graphically, provided that they are capable of distinguishing the goods or services of a company from those of other companies. In particular, it is possible to register words (including personal names), drawings, letters, numbers, sounds, forms of the product or its packaging, the combinations or shades of color.

The trademark owner has the right to forbid third parties from:

  • Using a sign identical to the trademark filed for products or services identical to those for which the mark was registered
  • Using a sign identical or similar to the registered trademark for identical or similar products or services if the identity or similarity between the signs, and the identity or similarity between the products or services may lead to a risk of confusion for the public, which may consist in a risk of association between the signs
  • Using a sign identical or similar to the registered trademark for different products or services if the use of the sign without justified reason allows the user to obtain an undue advantage from the distinctive character or fame of the trademark or causes prejudice thereof

Unregistered trademarks enjoy a less extensive protection. In fact, in order to get protection on a national basis, the trademark shall be used in a way originating from a general notoriety of the similar trademark.

Japan

A trademark means any letter(s), figure(s), sign(s), three-dimensional shape(s), or any combination of these, or color(s), or any combination of these, or sound(s) and other certain item(s) which identifies and distinguishes the source of the goods or services from those of others.

A trademark holder has the exclusive right to use the trademark for the product or service.

Registration with the Japan Patent Office is required.

Luxembourg

Any signs (such as, but not limited to, names, designs, imprints, stamps, letters, numerals, shapes of goods or their packaging, colors and slogans) that are able to be represented graphically and to be used to distinguish the goods or services of a company, are eligible to be registered as individual trademarks. However, signs solely comprising a shape which is imposed by the very nature of a product, which gives the product substantial value, or which is necessary for obtaining a technical result, may not be registered as trademarks.

Trademark protection requires the successful completion of a trademark registration process.

In order to be registered, the sign must have a sufficient "distinctive character." Such distinctive quality is not a constant but a variable. This means that a rather weak trademark at the time of registration may become a strong trademark through intensive advertising and enforcement, or, conversely and failing sufficient advertising and enforcement, that a strong trademark may become a weak trademark with a smaller scope of protection or even become the normal commercial description of a product or service for which it is registered as a result of the activity or inactivity of its owner, in which case the trademark will be declared as lapsed.

A registered trademark will give its owner an exclusive right to prevent any third party, without its consent, from:

  • Using in business a sign that is identical to the trademark for goods or services that are identical to those for which the trademark is registered
  • Using in business a sign that is identical or similar to the trademark because the goods or services covered by the trademark and the sign are identical or similar and there is a risk of confusion in the mind of the public because of the risk of association between the sign and the trademark
  • Using in business a sign which is identical or similar to the trademark for goods or services which are not similar to those for which the trademark is registered, where the trademark enjoys a reputation in the Benelux territory and where use of the sign without due cause would take unfair advantage of or be detrimental to the distinctive character or the reputation of the trademark
  • Using a sign for purposes other than those of distinguishing the goods or services, where use of the sign without due cause would take unfair advantage of or be detrimental to the distinctive character or the reputation of the trademark

Mexico

Trademarks can be visible names, figures, sounds, scents or the plurality of operational elements (image, shape, size, color, package, decoration, etc.) that are sufficiently distinctive and capable of identifying the products or services to which they are applied, or are intended to be applied, compared with others of the same type or category; three-dimensional shapes; trade names and company or business names, provided that they are not an exception; and the proper name of a natural person, provided that it is not the same as a registered mark or published trade name.

Trademarks shall be registered in relation to specific products or services according to the classification provided for by the Regulations of the Law.

Netherlands

Any signs (such as, but not limited to, names, designs, letters, numerals, colors shapes of goods or their packaging, or sounds) that can be represented in a sufficiently clear fashion and can be used to distinguish the goods or services of a company, are eligible to be registered as individual trademarks. However, signs solely comprising a shape which is imposed by the very nature of a product, which gives the product substantial value, or which is necessary for obtaining a technical result, may not be registered as trademarks.

In order to be registered, the sign must have a sufficient "distinctive character." Such distinctive quality is not a constant but a variable. This means that a rather weak trademark at the time of registration may become a strong trademark through intensive advertising and surveillance, or, conversely and failing sufficient advertising and surveillance, that a strong trademark may become a weak trademark with a smaller scope of protection or even become the normal commercial description of a product or service for which it is registered as a result of the activity or inactivity of its owner, in which case the trademark shall be declared as lapsed.

On the basis of a registered Benelux trademark its owner has the exclusive right to prevent any third party, who does not have the consent thereto from the trademark owner, from:

  • Using in business a sign that is identical to the trademark for goods or services that are identical to those for which the trademark is registered
  • Using in business a sign in respect of which, because it is identical or similar to the trademark and because the goods or services covered by the trademark and the sign are identical or similar, there is a risk of confusion in the mind of the public which includes the risk of association between the sign and the trademark
  • Using in business a sign which is identical or similar to the trademark for goods or services which are similar to those for which the trademark is registered, where the trademark is well known in the Benelux territory and where use of the sign without due cause would take unfair advantage of or be detrimental to the distinctive character or the repute of the trademark
  • Using a sign for purposes other than those of distinguishing the goods or services, where use of the sign without due cause would take unfair advantage of or be detrimental to the distinctive character or the repute of the trademark

New Zealand

Trademarks can be a word, phrase, design, image, smell, shape, sound, color, gesture, letter, number or any combination of these. Trademarks identify and distinguish the source of the goods or services of one trader from those of others traders.

Registering a trademark is not mandatory but is strongly encouraged so as to get the full benefit of the rights that trademark owners are afforded under the Trade Marks Act 2002. 

Though it is possible to enforce trademark rights in respect of non-registered trademarks, it can be more difficult as proof of ownership and use must be established, which, in some situations, can be difficult to show. Registering a trademark with the Intellectual Property Office clearly shows ownership and is difficult to dispute.

Norway

A trademark may consist of any signs capable of being represented graphically, or words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

Poland

Trademarks are signs that have a distinctive character and that distinguish the products of one company from the products of another company. A trademark has to have a graphic form in order to be registered – however, this statutory condition will be modified in the near future and the requirement of graphic representation will be abolished (the Polish parliament is working on an amendment to the Industrial Property Law (Bill No. VIII.3107) that will implement the provisions of Article 3 of Directive (EU) 2015/2436 of the European Parliament and of the Council, which does not require a trademark to be represented graphically). For instance, a word, design, color composition, shape, packaging, sound or melody may be registered as a trademark.

In Poland there are three regimes of registered trademark rights:

  • National trademarks (registered by the Polish Patent Office)
  • International trademarks (registered through World Intellectual Property Organization and approved by the Polish Patent Office)
  • EU trademarks (registered through EU Intellectual Property Office)

In Poland, a person wishing to seek protection of his or her designation (sign) does not have to register the trademark through any office. This person may benefit from an unregistered trademark right based on unfair competition law on the basis of prior use on the market. The Polish Industrial Property Law also confers certain rights on the owners of non-registered but  well-known trademarks commonly used in the Republic of Poland (a high degree of recognition by the relevant public is required).

The trademark right grants the owner the exclusive right to use the trademark in a commercial and professional way in the territory of Poland (or in the EU, based on an EU trademark). A trademark right prohibits any third party from manufacturing, using, offering, marketing or importing and exporting and stocking for these purposes, products marked with an identical, similar or confusingly similar trademark (in the case of renowned trademarks, the level of similarity is lower and does not require that goods marked with such trademarks be identical or very similar).

Portugal

A trademark may be composed by a sign (or a combination of signs) capable of being represented graphically (eg, words, drawings, letters, numbers, sounds, colors, the shape of goods or of their packaging) or by a sign (or a combination of signs) which may be represented in a manner which enables to determine the clear and precise subject matter of the protection, provided that such signs are capable of distinguishing the goods or services of one company from those of other companies.

The registered trademark confers to the owner, the right to prevent third parties not having his or her consent, from using in the course of trade any sign which is identical or similar to the trademark in relation to goods and/or services which are identical or similar to those for which the trademark is registered and where, because of its similarity, there is a likelihood of confusion or association on the part of the public.

Romania

Any signs, in particular words, including personal names, or designs, letters, numerals, colors, the shape of goods or of the packaging of goods, or sounds, provided that such signs (i) are capable of distinguishing the goods or services of one undertaking from those of other undertakings, and (ii) being represented on the register in a manner that enables the competent authorities and the public to determine the clear and precise subject matter of the protection afforded to its proprietor.

Russia

Trademark protection is available to signs that can be represented graphically, provided that they are capable of distinguishing the goods or services of a company from those of other companies. In particular, it is possible to register words and their combinations (including personal names), drawings, the combination of both as well as less traditional marks such as three-dimensional marks, sounds etc. To qualify for protection, a trademark must be registered with the Russian Trademark Office (Rospatent) or protected in Russia by virtue of the Madrid Protocol.

The trademark owner has the right to forbid third parties from using a sign identical or confusingly similar to its trademark if it is used in relation to goods or services identical or similar to those for which the mark was registered. This also captures the use on the Internet, including within domain names. The enforcement of trademark rights against violation in relation to dissimilar goods and services is much more difficult, but might be possible in rare cases depending on circumstances (typically through an unfair competition action).

An unregistered trademark does not enjoy legal protection. The exception is taking the intensively used designation into account when confronting with bad faith applicants or users. However, this requires a significant amount of evidence and is resolved on a case-by-case depending on circumstances of each specific dispute.

Saudi Arabia

Trademarks must generally take a distinctive form and be capable of distinguishing goods or services.

The GCC Trademark Law provides an indicative list of registrable trademarks, including names, words, signatures, characters, codes, numbers, titles, seals, drawings, images, inscriptions, packaging, figurative elements, shapes or colour, group of colours or combinations of colours. Unconventional marks such as sounds and smells are now also registrable under the GCC Trademark Law.

The KSA has adopted and applies the Nice Classification for the purposes of registration of marks.

An application for trademark registration is submitted to the Trademarks Office at the Ministry of Commerce and Investment. A person who has a registered trademark is its exclusive owner, and the use of a registered trademark by any other person requires the consent of the owner.

Singapore

A trademark is a sign used b a trader to distinguish its goods or services from those of others. Registration of a trademark gives the owner the exclusive right to use (and to authorize others to use) the mark for the goods or services for which the mark is registered.

Slovak Republic

A trademark can be any sign which can be represented graphically and which consists of, in particular, words, including personal names, letters, figures, drawings, shape of goods or their packaging or sounds, if such designation is capable of distinguishing goods or services of one person from goods or services of another person and of expressing in the Register of the Industrial Property Office in a way which enables the competent authorities and the public to clearly determine the subject matter of the protection.

South Korea

A trademark is broadly defined as any type of mark that functions to distinguish one's goods from others, regardless of its construction or its representation, including a symbol, character, sound, scent, three-dimensional shape, hologram, motion, a single color or any combination thereof.

A service mark is a mark that is used by a person who carries on a service business to distinguish such business from those of others. Except as otherwise expressly provided for under the TMA, the provisions under the TMA relating to trademarks shall apply to service marks as well.

Rights in a trademark based on prior use are only minimally protected, with the exception of "well-known" trademarks. The owner of a well-known, unregistered trademark may prevent others from using or registering a similar mark or may bring an invalidation action against such a registration.

As it may be difficult to establish the well-known status of a trademark, registration of trademarks is highly advisable to secure protection.

Trade dress of a service provider is now protected under the UCPA.  Examples of such trade dress are as follows: the manner in which goods are offered for sale or services are provided, and the overall appearance of the place where the service is provided such as signboards, and external and interior design,

The amended UCPA which took effect on July 18, 2018 introduced a new provision prohibiting unfair competition in connection with "idea theft" – the unfair use of the ideas of another with economic value that has been obtained as part of a business negotiation or transaction.

Spain

Words or combinations of words, names, figures, symbols and drawings, letters, numerals and combinations, three-dimensional shapes, including wrappers, containers and the shape of goods or their packaging, colors, numbers, sounds, and any combination of these elements, may constitute trademarks under Spanish law.

The procedures through which a registration having effect in Spain can be obtained are:

  • National system
  • International system
  • European Union Trademark

Sweden

A trademark may consist of any signs capable of being represented graphically, particularly words, including personal names, designs, letters, numerals, the shape of goods or of their packaging, provided that such signs are capable of distinguishing the goods or services of one undertaking from those of other undertakings.

Trademark owners are granted an exclusive right to use the trademark commercially and prevent third parties from using identical and confusingly similar marks for identical or similar goods and services as those protected by the trademark.

Switzerland

A word, a combination of letters, numericals, graphic images, three-dimensional forms, slogans, a series of tones or any combination of these elements which distinguish the products or services of one business from another can be protectable as a trademark.

Trademark rights become effective upon their registration.

Taiwan

A trademark is defined to be a sign with distinctiveness which is capable of being recognized by relevant consumers as an indication of the source of goods or services and distinguishing goods or services of one from others. A trademark may consist of words, devices, symbols, colors, three-dimensional shapes, motions, holograms, sounds, or any combination thereof.

Ukraine

In general, Ukraine is a first-to-file jurisdiction, which means that trademark rights arise out of registration of the trademark with the Ukrainian IP Office. However, well-known trademarks are protected regardless of registration in Ukraine based on the decision whereby they are recognized/well-known by the Ukrainian IP Office or the court.

A trademark under Ukrainian law is a designation distinguishing the goods or services of one entity from the goods or services of others.

Any words (including proper names), letters, numerals, figurative elements, three-dimensional designs, colors and combinations of colors or any combination thereof, may be protected as a trademark. Moreover, sounds may also be protected as trademarks if it is technically possible to register and publish them.

A trademark holder has the exclusive right to prohibit the third parties from offering, marketing, using, importing, exporting and labelling their products with an identical or similar trademark for identical or similar goods or use the trademark in business documents or on the internet.

United Arab Emirates

Registration of trademarks in the UAE is voluntary, but in practice, is highly advisable because the rights attaching to unregistered trademarks are limited (especially for marks which are not well-known internationally).

Registration provides the proprietor with the exclusive right to the use of the mark in connection with the goods or services for which it is registered (Article 7 Trademark Law). The UAE has adopted the 10th edition of the Nice Classification.

The owner of a registered trademark is considered the exclusive owner of the mark in the UAE.

United Kingdom

A registered right which may be obtained to protect a distinctive, non-descriptive sign consisting of words, slogans, designs, letters, numbers, domains, shapes, smells, sounds, colors, gestures or moving images that can be represented graphically and can be used to distinguish goods and services of one undertaking from those of another, subject to various grounds for refusal including conflicts with prior rights.

It is possible to register a sign as a national UK trademark or as a European UnionTrade Mark (EUTM) that applies to all EU member states.

A trademark is infringed by use of an identical sign for identical goods or services for which the mark is registered, or by use of an identical/similar sign for identical/similar goods or services for which the mark is registered where there exists a likelihood of confusion on the part of the public. Additional protection is given for well-known marks. Infringement of an EUTM potentially gives a trademark owner EU-wide relief.

United States

A word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others are protectable as trademarks.