Update on the Protection of Geographical Indications and Appellations of Origin in Argentina

There are two pieces of legislation in our country which regulate the protection of Geographical Indications and Appellations of Origin. The first deals with wines and spirits and the other one covers agricultural products. Both laws have been regulated and since their enactment, which aimed at complying with the minimum standards of protectionn for this type of rights provided by the TRIPs Agreement, a number of resolutions have been passed both at ministerial and judicial levels. The purpose of this article is to go over the main legal provisions and highlight recent case-law to have a general picture on the protection of the mentioned rights in Argentina.

1. Wines and spirits

Law No 25,163 dated October 12, 1999 establishes the protection for Indications of Source (IS), Geographical Indications (GI) and Appellations of Origin (AO) of wines and spirits. Decree 57/04 published on January 16, 2004 regulates such law.

Under the mentioned law,  the following may not be registered as IS, GI and/or AO:

a) the names which have become a common (or generic) term of the product in the country of origin.

b) the varietal name of the grape.

c) the registered trademarks  covering  viticulture products.

According to Decree 57/2004, foreign IS, GI and DO showing their registration in the country of origin may be included in the National Registry.

Regarding trademark applications, Decree 57/2004 states that the National Institute of Industrial Property (INPI) will require from the National Institute  of Viticulture (INV) information about trademark applications containing geographical names in  international class 33 (alcoholic beverages excepting beers) . The INV decisions will be compulsory for INPI.

The INV, which is the body in charge of applying Law 25,163, has issued several resolutions regulating Law 25,163. In this respect, we would like to mention the following:

- Resolution No. 20/2004, dated June 14, 2004, which approves the requirements for the labeling of  vinic products.

- Resolution 8/2008, dated June 4, 2008, which provides the conditions to produce wines under a certain GI.  In particular, such resolution states that the manufacturer and the wineries of the grapes to be used, which manufacture wines with a GI, must first obtain the registration, protection and the right to use such GI. As of 2008 the wine manufacturers using a GI    shall give notice to the INV in advance of their decision to do so.

Law 26,633 published on September 14, 2010 recently approved the Agreement of the World Wine Trade Group on the Requirements for Wine Labeling signed in Canberra, Australia, on January 1st, 2007.

2. Agricultural and food products

Law 25,380 as modified by Law 25,966, published in the Official Gazette on December 21, 2004, provide the legal basis for the protection of GI and AO of agricultural and food products. Such law is regulated by Decree 556/2009 published on May 18, 2009.

According to such laws, the following may not be registered as GI and/or AO:

a) a name which has become a common (or generic) term of the product in Argentina,

b) a term that has already been registered or used in good faith as a trademark before January 1, 2000 or before the registration of the GI and/or AO in the country of origin,

c) terms confusingly similar to names already registered as GI and/or AO for agricultural and food products, and

d) names which are liable to  mislead consumers  as to the origin, properties or characteristics of the agricultural and food products.

In addition, the foreign GI and/or DO may be registered if they are registered in their countries of origin.

In relation with trademark applications, INPI will require from the Secretariat of Agriculture information about trademark applications containing geographical names related to agricultural and food products mainly  in international classes 29, 30, 31 and 32 as well as in any other relevant class.

It is worth mentioning that the Secretariat of Agriculture has registered the trademarks “ALIMENTOS ARGENTINOS UNA ELECCIÓN NATURAL” as well as its English version “ARGENTINE FOOD NATURAL CHOICE”, and the name “Marca País” formed by a design. Any natural or artificial person manufacturing foods and complying with the proper requirements, may apply for the right to use such trademarks. This trademark or “certified seal” facilitates the identification of Argentine foods and at the same time represents a “national image” making it possible to place Argentine foods in the domestic and international markets.

3. Recent Case-law
 
A couple of court decisions in the trademark field were recently handed down in connection with oppositions and claims against the use of names which constituted appellations of origin or geographical indications.

In re "Peters Hnos Cia Com e Ind SA c/ Institut National des Appellations D'Origin" issued on August 12, 2010, Division I of the Federal Court of Appeals  for Civil and Commercial Matters declared that the opposition filed by the defendant against a trademark application which included a foreign appellation of origin was well founded.

On November 3, 2009  Division III of the Federal Court of Appeals for Civil and Commercial Matters in re “Muneta, Patricio s/sucesión c/Bodega Noemia de Patagonia SA”, revoked  a decision of the lower court  and ordered defendant to refrain from using the trademarks “NOEMIA PATAGONIA” and “J.ALBERTO PATAGONIA” in relation with wines. The court took into account that plaintiff was the owner of a registered trademark and also considered a resolution of February 19, 2009 issued by the INV to decide a particular case. By this resolution, the INV had denied the use of PATAGONIA as a GI bearing in mind that such name was registered as a trademark and that there was no authorization for use as a GI. Furthermore, the court said that since PATAGONIA “has been protected as a GI that grants enough likelihood to the right invoked, especially considering that the term PATAGONIA is part of the trademarks involved”.

On November 13, 2009 the same Division of the Court of Appeals issued a similar decision in re "Muneta, Patricio s/sucesión c/ Bodega del Fin del Mundo SA".

In relation with such decisions, it must be borne in mind that Resolution 10/2009 issued by the INV and published on April 21, 2009 declares that the expression PATAGONIA ARGENTINA is a synonym of PATAGONIA: thus, only the use of the expression PATAGONIA ARGENTINA as a geographical indication will be authorized as long as the registration of the trademark PATAGONIA is in force. Such resolution was issued in order to resolve the conflict between the registered trademark PATAGONIA and the subsequent acknowledgment of PATAGONIA as a GI.
 
4. Conclusion
 
As mentioned at the beginning of this article, Argentina has complied, through the enactment of various laws, with the minimum standards of protection for Geographical Indications and Appellations of Origin, as foreseen by the TRIPs Agreement. In that regard, although there has been a significant evolution in the protection of such rights in our country, there is still some way to go, in particular as regards the harmonization of all this system of protection so that it results in a fluent and non-conflicting interaction with our trademark system.