ARGENTINA Law and Practice Contributed by: Santiago R O’Conor, Gisela M Russo, Gisela M Manrique and Ayelen Rocio Velaz, O’Conor & Power
7.3 Factors in Determining Infringement In determining whether the use of a trade mark or copyright constitutes infringement, the following fac - tors must be considered: • similarity; • confusion; • commercial use; • scope of protection; and • rights of the owner. These factors are established by law, and are regu - lated in the following laws: • the Trade Marks and Designations Law (Law No 22.362); • the Copyright Law (Law No 11.723); • the Paris Convention for the Protection of Industrial Property (Law No 17.011); • the Berne Convention for the Protection of Literary and Artistic Works (Law No 22.195); and • the TRIPS Agreement (Law No 26.662). 7.4 Prerequisites and Restrictions to Filing a Lawsuit In order to proceed with the filing of a lawsuit, the fol - lowing are required: • registration of the trade mark at INPI or copyright at DNDA; • proof of infringement, such as documents, photo - graphs, recordings, etc; and • a prior warning letter to the infringer is advisable, as well as the possibility of requesting a media - tion hearing in order to bring the infringement to an end. Certain restrictions limiting the ability of the trade mark or copyright owner to enforce their right against third parties are regulated by the following laws: • Law on Trade Marks and Designations (Law No 22.362) – establishes the restrictions for the use of the trade mark and the territorial limits; • Copyright Law (Law No 11.723) – establishes restrictions for the use of copyright and territorial limits;
• Law for the Defence of Competition (Law No 25.156) – establishes the restrictions for the use of the trade mark or copyright in relation to competi - tion; and • Civil and Commercial Code – establishes the restrictions for the exercise of trade mark or copy - right rights in relation to good customs and com - mercial ethics. Some of the most common restrictions are: • unfounded threats; • misuse/abuse;
• competition law; • territorial limits; • limitation period; • exceptions and limitations; • good manners; and • proportionality.
It is worth highlighting that prerequisites may vary depending on the specific circumstances of each case. 7.5 Lawsuit Procedure In the case of trade mark infringement, proceedings will be brought before the Federal Criminal and Cor - rectional Court for criminal actions, and before the Federal Civil and Commercial Court for civil actions Please bear in mind that trade mark and copyright cases fall under federal courts, as established by Arti - cle 17 of the National Constitution. Before initiating legal action, mandatory pre-judicial mediation must be complied with. An exchange of cease-and-desist letters is also common prior to the mediation. The parties must always, in any type of judicial litigation and even before the administra - tive authorities in charge of regulating IP rights(INPI, DNDA, etc), be represented by an attorney. Owners of foreign trade marks or copyrights can file infringement lawsuits. It is essential and advisable that the trade mark or work is registered in Argentina.
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