A Primer on Design Protection in Argentina (Part 1 of 2)

Why industrial design protection in Argentina?
 
Since industrial designs are only formally examined, registration is very fast, and if all the papers have been filed together with the application and meet the legal requirements, in urgent cases it may ensue in a couple of weeks.  Furthermore, the resulting rights are very broad: upon a showing of ownership, actual or imminent infringement and sufficient assurance to the defendant, the courts may issue a preliminary injunction, i.e. before the substantive lawsuit is filed, if the owner proves that an industrial design has been granted for the same shape or appearance in a country where substantive examination is carried out.
 
What can be protected with industrial designs?
 
The applicable statute under Argentine law is decree-law No. 6673/1963, issued August 9, 1963 and ratified by Law No. 16,478 on September 17, 1964, which became effective on August 27, 1965.
 
The general rule is that the ornamental shape or appearance incorporated in or applied to any industrial product can be protected in Argentina with an industrial design.   This comprises two-dimensional products, such as for instance the pattern on a cloth, as well as three-dimensional products.  Colors may be claimed, provided they are not the only novel feature in the design; on the other hand, surface shadings and materials may not.
 
Accordingly, taken at random from the official publications, industrial designs have been granted in Argentina for such diverse products as fastening means, electric heaters, socks, electric showers, car lights, kiosks, tooth-brushes, guitars, lighters, bottle holders, portable glasses, folding chairs, swimming suits, beer mugs, vehicles, hangers, calendars, jackets, shock suspenders, containers, pockets, glasses, tricycles, punching balls, inflatable toys, skating boards, caps, vacuum cleaners, brushes, ashtrays, cutlery, etc.
 
In Argentina there are no statutory provisions or decisions barring must-fit and must-match parts.  Automobile parts (mirrors, bumpers, fenders, lights, etc.) may therefore be protected via designs.
 
It is also possible to obtain rights for a graphical user interface (GUI), with the same scope as any other design registration of similar objects.  The title must clearly indicate that the figure is to be used as a GUI.   Copyright protection is also available for GUIs, but it must be borne in mind that copyright protects against copying but not against independent infringement.
 
Software animations are allowed in design applications.  The application must include figures showing as much intermediate positions as possible but only if the object changes its shape with these.  The device need not be claimed.
 
What are the requirements for a protectable design?
 
To be protectable a design must meet the following requirements:

1. Ornamentality: the shape or appearance must produce a visible esthetic effect; there is no prerequisite as to the measure of ornamentality or visibility.  If the effect of the shape or appearance is purely functional, no valid design may ensue.
   
2. Novelty: the shape or appearance must be new on the filing date or its Convention priority.  Any prior disclosure will destroy novelty, unless it happened within the 6-month Convention term or was carried out by the author or someone having the author’s consent in a fair or exhibition within 6 months prior to the filing date. Earlier designs, even when pending, will also destroy novelty.   Prior art will include any document showing the same object published before the filing date of the design in Argentina (or its priority date); the anticipation can consist of a published patent application, a registered design, a brochure, a book, or any drawing on the Internet (with regard to the latter, there must be certainty as to the date on which the drawing became available in the Internet).   There is no requirement as to non-obviousness.
   
3. Originality: the design must have been created by the registrant or the registrant’s predecessor in title.
   
4. Industrial character: the design must be incorporated in or applied to an industrial product; artisans’ creations are encompassed.
   
5. Fixed shape or appearance: the shape or appearance must be concrete and have some degree of permanence; this rules out ideas, fashion styles, creams and granulated substances.
   
6. Lawfulness: designs which are scandalous or immoral may not be protected.
   

 
What are the necessary documents for design protection?
 
The following documents are needed:

1. Power of Attorney, notarized and legalized by the Argentine consul or by apostille; it must be filed along with the application or thereafter within a non-extendable 40-day term; failure to timely submit this document automatically causes forfeiture of the application.
   
2. Priority document (certified copy of the priority application, issued by the home PTO); no legalization needed, but it must be translated into Spanish; it must be filed along with the application or thereafter within a non-extendable 90-day term; failure to timely submit this document automatically causes forfeiture of the priority.
   
3. assignment of priority rights, when the foreign application whose priority is claimed has been filed by someone other than the applicant in Argentina; no notarization or legalization needed, but it must be translated into Spanish; it must be filed along with the application or thereafter within a non-extendable 90-day term; failure to timely submit this document automatically causes forfeiture of the priority.
   
4. A short description.
   
5. Formal drawings.
   

 
What are the specific requirements for the description?
 
According to the regulatory decree, it must briefly set forth the “elements which compose the model or design, in order to supplement the illustration provided by the drawings”.   There are no other specific requirements.
 
The most advisable course of action is to use a brief description, limited in essence to the listing of the drawings.  At best, an overabundant disclosure will be useless, and at worst, albeit exceptionally, it may be used in court to try to limit the scope of the design if the drawings are ambiguous.
 
A design application can include a maximum of 50 embodiments, provided they are “homogeneous”, i.e. present a common esthetic features.
 
What are the specific requirements for formal drawings?
 
In Argentina the drawings are very important because they determine the scope of the design.  The description may be used to supplement or support the drawings, but the drawings will always prevail should they differ from the description.  For this reason, the specific domestic requirements for formal drawings must be taken into account carefully.
 
There is no limit to the number of views per embodiment.  As a rule, the following views are advisable: front perspective, front, rear, right, left (unless it is a mirror view of the right), top and bottom. They must be submitted on 210 x 297 mm Bristol Board with a 10 mm unlined free margin, with the following features:

1. The first sheet may not include more than three figures.
   
2. Figure 1 must be a perspective view.
   
3. Figures must be consecutively numbered (i.e., Fig. 1, Fig. 2, Fig. 3, etc.).
   
4. In the main figures (main embodiment), the characteristic features of the design must be illustrated in a thicker continuous line, while those features which are not claimed, or are known, or generically belong to the context, must be shown in a finer or broken line.
   
5. In the alternative embodiments, the details which affect the appearance of the basic design or transform it into a different product but not into a different design, must in turn meet the following requirements:
   
   
   
   1. features which are different from the basic design must be shown in thinner or broken lines, while unchanged features must be illustrated in the same continuous line as in the basic design;
      
   2. each example must be numbered consecutively (in Spanish: Ej. 1, Ej. 2, Ej. 3, etc.);
      
   3. if the same example is shown in different positions, then these too must be numbered consecutively (in Spanish: Ej. 1a, Ej. 1b, Ej. 1c, etc.).
      
   
   
6. Up to 50 embodiments are allowed in a single application, with the following conditions:
   
   
   
   1. all embodiments must be homogeneous, i.e. present a common esthetic features;
      
   2. the ornamental features in the secondary embodiments that change compared to the main figures must be drawn in broken lines;
      
   3. in the secondary embodiments no excluded parts may be shown (that is, excluded parts may not be shown in broken lines to avoid ambiguity)
      
   4. in the secondary embodiments those views that keep unchanged compared to the those included in the main figures must be deleted.
      
   
   

 
Photographs may be used, but the traditional pen-and-ink drawings can result in a broader scope because as a rule they will contain fewer details that can introduce unwanted limitations. Also, these drawings can show excluded portions drawn in broken lines. On the other hand, photographs may be more convenient when showing objects that contain a particular surface finish that can not be easily shown via shading.
 
In view of these specific requirements and features for formal drawings in Argentina, it is best to consult local counsel beforehand, to avoid official objections and the attendant expenses.