Every Law Has Its Loophole...

Author:Ms María Nájera
Profession:Clarke, Modet & Co

Not often do clients seek our advice in connection with the measures that should be taken in IP terms before going into the market or embarking on any venture. In those few but precious cases, we would doubtlessly advise on the benefits of registering a trademark and would highly recommend them to do so.

While it is true that the procedure seems straightforward, sometimes it is not, and it can get complicated, either by third-party oppositions, office actions, or even delays inherent to the procedure. Yet, generally, these issues can be overcome on the basis of agreements, abidance by the requirements prescribed for trademark registration in some cases, and exercising patience.

Conflict may arise in those cases where our clients allow for reasonable time to go into the market once the trademark application has been filed (publication period and deadline to file oppositions) and within that lapse their competition outpaces them with a similar trademark, in a clear move to boycott the business project.

In this scenario, the Law on Trademarks proves insufficient to safeguard the diligent merchant.

First and foremost, because the trademark application is not suitable for requesting legal assistance by means of precautionary measures, given the grant of these measures is subject to the status of "registered trademark" owner. The same standard applies to criminal proceedings, where those who use a registered trademark or violate the intellectual property rights of its owner are punished.

It is widely known that the ownership of a trademark and the exclusive right to use it derive from its registration. This statement, cited as a cliché, would be crucial in cases such as the that referenced before, where no such registered trademark exists, but the intention to register it is real.

Moreover, the credibility of the Law also proves weak, given that we only enjoy a "merely" right in expectation, and these measures have been granted solely for exceptional cases under similar circumstances.

In turn, the proceeding prescribed in section 35 of Law No 22362 aims at providing the petitioner with a guarantee in case the use of the trademark continues during the course of the trial. However, the decision to continue or discontinue the use of the trademark remains on the transgressor —who is entitle to bail so to further its exploitation—not on the petitioner.

And, even though the Law refers to the "petitioner", certain court rulings have...

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