In the Argentine trademark system, use of the mark plays a central role in preserving the acquired right. Although registration grants a temporary monopoly of 10 years, this right is conditioned to the mark being effectively used in the market. Below we outline the main aspects to consider.
When must use of a mark in Argentina be evidenced?
The Trademark Law No. 22,362 establishes the obligation to use trademarks:
- Only those marks that have been used may be renewed (Art. 5).
- Between the fifth and sixth year of validity, the owner must file a Mid-Term Declaration of Use (DJUMT) regarding the use made of the mark up to that moment (Art. 26).
However, neither in the renewal nor in the DJUMT is it required to submit documentary evidence of use. The owner’s sworn statement is sufficient.
That being said, such statement must be truthful. If the mark is not in use, the registration could be subject to cancellation, and the renewal could be challenged as null if based on a false declaration.
On the other hand, when a third party files a cancellation action for non-use, the scenario changes: the owner must provide conclusive evidence of the use of the mark during the five years prior to the filing of the action. In this context, it is crucial to know what constitutes valid use and what documents may serve as proof.
Burden of proof
The burden of proving the use of a mark challenged for non-use rests primarily with the trademark owner.
Prevailing Argentine case law holds that the burden of proof falls on the owner, since they are in the best position to provide such evidence. The claimant can only be expected to show minimal evidence of “non-use,” as proving a negative fact is extremely difficult.
What is considered valid use of a trademark?
The law, as well as doctrine and case law, have established certain parameters to determine whether use is valid for the purpose of maintaining a registration in force:
- Pursuant to Arts. 5 and 26 of the Trademark Law, the mark must be used:
- in the commercialization of a product,
- in the rendering of a service, or
- as part of the designation of an activity related to such products or services.
- The mark must be used within Argentina, meaning the product or service must be effectively available in the Argentine market.
- According to doctrine and case law, use must be clear, genuine, and unequivocal.
- The mark must be used as registered, although minor variations not altering its distinctive character are acceptable.
- As to the intensity of use, the law does not set a minimum threshold. The number or frequency of sales or services rendered will be assessed on a case-by-case basis, depending on the nature of the product or service.
Use on the internet
Use on digital platforms or websites may be deemed valid provided it is directed to Argentine consumers. This implies that the offer of goods or services must be accessible in the country and not limited exclusively to a foreign market.
What evidence may serve to prove use?
Some examples of useful evidence include:
- Invoices or sales receipts issued to clients in Argentina.
- Delivery notes proving distribution of products.
- Advertising material (ads in local media, digital banners).
- Service agreements where the mark is included.
- Website screenshots, supported by certifications showing availability in Argentina.
- Social media records with evidence of local interaction.
- Accounting certifications proving sales of goods or services.
Maintaining a broad, consistent, and contemporary set of records strengthens the defense of trademark rights.
Final remarks
Keeping organized and updated records is the safest strategy to mitigate risks and preserve the validity of trademark rights in Argentina.
Our team regularly assists local and foreign clients in the preparation of evidence of use and in the defense of cancellation actions.
For professional assistance in this type of proceedings, please contact us.
