Argentina: Injunctions on the Move

With the adoption of the TRIPs Agreement in January 1995, IP holders were given the possibility of resorting to the injunctions prescribed in article 50 of such treaty which have proved to be an effective weapon to fight against trademark piracy and counterfeiting. Although these remedies were available on the basis of the provisions of the Procedural Code, Argentine courts very rarely granted such injunctive reliefs in connection with intellectual property matters.

Article 50 of TRIPs is applied under the following conditions:

* a strong conviction in the judge’s mind that plaintiff is prima facie an IP holder and that there is a likely imminent infringement;

* that it may cause harm; and

* that adequate guarantees are given by plaintiff.

Although this type of relief is reserved for the most flagrant cases of IP counterfeiting and piracy it provides nevertheless a useful contribution to the arsenal of weapons at plaintiff’s disposal.

Over the last four years Argentine federal courts have granted numerous injunctions in various cases after having pondered different facts and circumstances vis-à-vis the conditions established in TRIPs.

Trade marks

In the most recent court decision involving article 50 of TRIPs in re American Home Products Corporation c/ Laboratorios Rontag s/ medidas cautelares , Division II of the Federal Court of Appeals ordered defendant to refrain from starting use or authorising third parties to use its registered mark SONATA to identify any pharmaceutical product, especially one for treating insomnia until a final decision was rendered in the case.

The case is particularly interesting because of the special circumstances involved:

* Defendant owned a registration for SONATA in Argentina.

* On the basis of the abovementioned registration, defendant opposed an application for that same mark filed by plaintiff.

* The infringed trademark SONATA was considered not to meet the standards of notoriety established by article 6 bis of the Paris Convention.

In spite of the above, plaintiff proved that in early 1997 it had filed applications for registration of the trademarks QUILOR and SONATA with the U.S. Patent and Trademark Office as part of an international project. Plaintiff also proved that, almost a year later, both trademarks, i.e. QUILOR and SONATA, were applied for and then registered in Argentina by Laboratorios Rontag, a local lab who surely must have known that such marks belonged to plaintiff as both companies are competitors in the pharmaceutical field. On the basis of article 50 of TRIPs and article 953 of the Civil Code, the court decided to grant the requested injunction to plaintiff in view of the rights and facts invoked and considering defendant’s behaviour which, in the opinion of the court, breached the most elementary ethical considerations.

Domain Names

Article 50 of TRIPs has also been used as a basis to request injunctions in connection with domain names piracy cases as a quick and effective solution. In fact, such injunctions have been regarded by the courts as the most suitable protection against cybersquatters.

In Argentina, it is possible to register domain names under the country TLD.ar through a service called NIC Argentina, administered by the Ministry of Foreign Affairs, free of charge. Names are alloted on a first-come, first-served basis with little or no examination procedure and no responsibility is accepted by the service regarding third party disputes. ICANN rules do not apply. This system has proved to be fertile ground for numerous cases of cybersquatting or outright piracy of well-known marks registered by an unauthorized third party as domain names. Affected parties have chosen to seek relief from the Argentine courts resorting to article 50 of TRIPs and although no final judgements have yet been passed, the preliminary injunctions granted to trademark owners are an indication that the courts understand and address the problems and deficiencies posed by the domain name registration system .

In re Tinelli, Marcelo Hugo c/Salama, Walter s/medidas cautelares a Court of First Instance ordered the temporary cancellation of the domain name www.marcelotinelli.com in Internic and the temporary registration of such domain name in favor of the plaintiff, a well-known entertainer hosting one of the most popular local television programs. Considering that the domain name had been registered in the U.S. and that the proceedings concerning the enforcement of the court decision via rogatory letters would take some time, the court issued an additional judicial order (in Spanish prohibición de innovar ) to maintain the status quo and thus prevent that the existing situation be altered during the prosecution of the pending court proceedings.

Patents

Although in the only published case, in re American Cyanamid Company c/Makteshim Agan Holding Bv s/cese de uso de patente , the Court of Appeals held that article 50 does not apply to patents, we understand that this view will be changed in the near future, since on that occasion, the Court did not have in mind the precedence of international treaties with respect to local law that our Constitution has recently incorporated. Nevertheless, it has to be borne in mind that, with respect to patents, it may be more difficult to obtain sufficient evidence for the Court to establish a “strong conviction” of the existence of the alleged infringement.

Looking ahead

The above cases have confirmed that the Argentine court system can provide proper and timely remedies to IP holders by resorting to article 50 of TRIPs.

The criteria followed by the courts when considering the applicability of the provisions of such article has evolved and become more flexible through the years.

TRIPs has opened interesting possibilities of obtaining injunctions in cases of intellectual property infringement which, although available in general procedural law, were rarely applied and not expressly provided for under the trademark and patent laws.