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

It is not mandatory that the drawings filed in the priority application be identical to those filed in the national application in order to claim priority rights, but the differences may only refer to the following aspects: (i) number of views; (ii) excluded parts drawn in broken lines; (iii) shading lines; (iv) photographs replacing line drawings and vice versa; (v) number of embodiments. 
 
In 2007 Argentina adopted the 8th edition of the Locarno Classification for Industrial Designs.  The class does not affect the protection afforded by the design.
 
There is no opposition procedure nor an expedited procedure.   A way to expedite registration of a design application is to file all requisite documents simultaneously with the application.  As mentioned above, late filing is allowed: 40 days for the Power of Attorney, and 90 days for the formal drawings, the priority document, the assignment of priority rights, and their respective translations. These terms may not be extended. No rectification proceedings are foreseen in the statute.
 
The average length of time from the date of filing until the issue date for design registrations is of 1-2 months if all required documents (Power of Attorney, formal drawings, priority document, assignment of priority rights) are filed simultaneously with the application.  If late filings (i.e., not simultaneous with the application) are needed, the average pendency may take 5-6 months. There is no protection for the design while the application is pending because it is kept secret, but once it is registered the registration will be deemed valid and effective as of the filing date.
 
Design applications are not published during their pendency. The publication is carried out after grant in electronic form via the PTO’s web page, but only basic data and a quite small version of the figure 1 can be accessed.  These publications can be easily searched in the PTO’s web page.  After grant the physical official file becomes available to the general public; there are no microfiche or scanned copies of these files.
 
On the other hand, a design that has been abandoned or refused is not open to the public.  A fresh application may be filed, whose validity will be conditional on meeting the statutory requirements on the new filing date, including absolute novelty.
 
The deed (official certificate of registration) is delivered to the patent agent or the applicant in paper format.  There is no procedure under Argentine law to change a registered design: there is no certificate of correction or reissue procedure, except for obvious typos in the deed or in the applicant’s data.
 
What is the duration of a registered design?
 
Registered designs are protected in Argentina for three immediately successive five-year terms, beginning on the date of the first filing.  Renewal must be applied for between six and nine months prior to expiration of the running quinquennium. No term –each individual quinquennium or two or more of them, nor the three-month window for renewal– may be extended.  There is no grace period either.
 
Can a design registration be canceled?
 
A design registration may be cancelled due to invalidity, i.e. if the registration was granted to someone other than its author or the author’s rightful assignee, or was granted notwithstanding a statutory bar against its grant (lack of novelty or ornamentality, scandalous subject matter, etc.).
 
Cancellation can only be decided by the Federal courts, not the PTO, pursuant to a petition for invalidity raised as a defense or as a counter-suit in the same process, or submitted in a separate complaint seeking invalidation of the registered design.
 
On the other hand, there is no requirement for working designs in Argentina, and consistent with Art. 5.B of the Paris Convention there is no provision in the statute that a registered design shall lapse or cannot be renewed if it is not worked.
 
How is a design enforced?
 
The owner of design registration has an action in law against anyone who, without authorization, commercially or industrially exploits, with regard to the same or different products, the protected design or imitations thereof.  Infringement must be proved in court with true samples of the infringing device, a certified copy of the design patent, and an expert witnesses’ accounting of the infringing sales.  If infringement cannot be established merely by comparing the registered design with the infringing device, then a technical expert witness may be needed.
 
The scope of a design registration/patent is determined by the drawings.  The description can only support the drawings.  The legal standards are taken from the viewpoint of an ordinary/average consumer, i.e. the judge views the issue as an ordinary/average consumer would.  No surveys are made.
 
A design will be protected even if it appears in a different product: the design of a soccer ball will be protected if it is used for a piece of soap or a pencil-sharpener.   As a rule, small differences between the protected design and the accused design do not rule out infringement. Nevertheless, there is no precise measurement for such differences.
 
A preliminary injunction may be requested but is unlikely to be granted because design registrations are issued in Argentina without a substantive examination.  However, ownership of a registration for the same design in a prior examination country (such as the U.S.A., Mexico or Japan) may be advantageously invoked to support a request for preliminary injunction.  Alternatively, during the main suit the plaintiff may request that the defendant be enjoined pendente lite from using the allegedly infringing device but must post a bond if the defendant agrees to it; if defendant wants to continue manufacturing or selling the device, then he must post the bond instead.
 
Trial is carried out before a judge; there are no jury trials in Argentina.  Court proceedings in Argentina are written, and it usually takes 18 months to two years until the district court issues a decision; this sentence may be appealed from before the Federal Court of Appeals.  Although these issues can reach the Supreme Court, as far as we can recall only one case did in nearly 50 years.
 
What are the advisable strategies?
 
It is not advisable to claim colors, or color combinations, unless they are a distinctive feature in the design.  Nonetheless, it must be borne in mind that the design will not be valid if the colors are the only novel feature.
 
When filing a color design it may be advisable to also file a second design for the same shape or appearance in black and white, in order to obtain a broader protection.  The Argentine PTO will not allow a single application encompassing both the color and the black and white embodiments.
 
Overlapping of designs and trademarks (as well as copyrights) is possible in Argentina, as there is no statutory provision barring it. Three-dimensional trademarks are acceptable.  The advantage of a design is its extremely speedy registration, while or a trademark registration it lies in its indefinite duration (subject to use and renewal).  Where simultaneous protection is sought via design and trademark, in order to avoid reciprocal anticipation (which can be absolutely destructive for the designs) both applications should be filed on the same day.