Prohibition for trademarks with “eco” and “bio”

Decree No. 206/01 regulates Law No. 25,127 by prohibiting the sale of agricultural and livestock products, raw materials, semi-processed goods, finished goods and by-products under the names of “ecológico” (ecological), “biológico” (biological), “orgánico” (organic), “eco” or “bio” unless prior certification is obtained from the National Service for Health and Quality of Agriculture and Foodstuffs (“SENASA” -. Servicio Nacional de Sanidad y Calidad Agroalimentaria)

Article 10 of the Decree states the terms “ecológico” (ecological), “biológico” (biological), “organico” (organic), “eco” or “bio” cannot be, or constitute part of, trademarks for agricultural and livestock products such as foodstuffs, fibers, wood, furniture and paper. This does not apply to trademark registrations existing before Law No. 25,127 came into effect (September 8, 1999). Although this law says nothing regarding trademarks, the Decree declares the need for this prohibition “to give the consumer effective protection”.

We believe that the Decree exceeds the scope of the law which it regulates and affects rights which are acquired under a totally independent system, Trademark Law No. 22,362, and establishes a prohibition which the law it regulates does not require. The lack of coherence is evident if we consider that trademarks such as BIOMAGIC, BIODEN, BIONICO, ECOTECH, ECOJET, CUENTA ECOLOGICA BANCO PATRICIOS and CLUB AMIGOS DE LA ECOLOGIA are currently registered without apparent detriment to the consumer.

Based on the above the National Institute for Industrial Property (“INPI” - Instituto Nacional de la Propiedad Industrial), has recently objected trademark applications which include the prefix or suffix “BIO” or “ECO” to cover paper, food or beverages. It is not yet clear whether this may apply to other goods. It would be desirable for the INPI to make a restrictive interpretation of this Decree by limiting the type of cases to which it is applied, for instance prohibiting trademarks with BIO or ECO written separately from the rest of the mark but not if they are inseparable from it (e.g.prohibiting BIO FRESH but not BIOFRESH). INPI could also authorize a disclaimer of the objected terms granting registration on the entire trademark. For now we will need to wait and see how INPI finally resolves the issue.