Designs

1. OVERVIEW

Industrial model or design registrations are granted to protect the appearance or shape incorporated in, or applied to, an industrial or artisanal product and which confers an ornamental character to it. An industrial model refers to a three-dimensional (space) design, while an industrial design (also called industrial drawing) involves a design in two dimensions (plane).

Priority basis: first-to-file.

Industrial Model and Design Law (Law Decree Nº 6673 -9/8/63 amended by Law No. 27.444 of June 18, 2018).

The rights of a model or design can only be enforced provided that it has not been published or used in Argentina or abroad prior to the filing application date. However, models or designs disclosed within six (6) months prior to their filing date or priority date will be considered novel in any of the following scenarios:

1. That said disclosure had resulted, directly or indirectly, from activities by the author or his/her rightful successors.
2. That the disclosure originated from a third party acting in bad faith or having committed a breach of trust; a breach of contract or other illicit act committed against the author or his/her rightful successor.
3. That the publication by the Register of Industrial Models and Designs had been made in an erroneous or improper manner.

Argentina is a party to the Paris Convention.

The duration of a design is of five (5) years, renewable for two five (5)-year terms.

All physical or legal entities, national or foreign, are entitled to obtain designs and models.

The design made by employees in the course of their employment belongs to the inventors, except in the case that they were hired to develop the specific design activities.

Although protection of the appearance or shape of an object can be obtained by both model/design and copyright, when initiating a lawsuit it is not possible to invoke them simultaneously.

2. PROCEDURE

The following documents are required to file an Industrial Model or Design application in Argentina:

1) Power of Attorney, notarized and legalized (by Apostille or by the Argentine Consulate) must be dated prior to the filing date in Argentina.

2) If an international priority under the Paris Convention is claimed, the following are the requirements:

a. Country, date and number of the priority application
b. Priority document
c. Original or Certified Copy of Assignment of Priority Rights

2) a. Country, date and number of the priority application: The country and date of the priority application must be stated at the moment of filing the application. The application number should be provided at the moment of the filing, if available, but can be stated later on.

2) b. Priority document. It must be filed within ninety (90) days from the filing date in Argentina, either in Spanish or together with a Spanish translation, verified by Argentine Sworn Translator. This document does not require legalization. Electronic priority documents issued by the corresponding Office as well as scanned copies of physical certificates are allowed.

Some PTOs can issue bilingual priority certificates. If the priority certificate is issued in the original language and Spanish, there are no other formal requirements other than filing the certified copy of the priority certificate. If the priority certificate is issued in English, we can translate the priority certificate into Spanish ourselves and have it verified by an Argentine Sworn Translator.

On the other hand, if the PTO can only issue priority certificates in a language other than English or Spanish, then there are two options:

i. With a sworn translation from the original language to English, duly signed and stamped by the sworn translator and legalized (by Appostille or by the Argentine Consulate) in order to certify that the person who translated the document is indeed a sworn translator. Once we receive the priority document and the legalized sworn translation we can translate the latter into Spanish and have it verified by an Argentine Sworn Translator. This also applies to Assignment of Priority Rights documents.
ii. We can have the priority document translated directly by an Argentine Sworn Translator. This is usually the most expensive option since Argentine Sworn Translators specializing in languages other than English charge very high rates. This also applies to Assignment of Priority Rights documents.

2) c. Original or Certified Copy of Assignment of Priority Rights. The right to claim priority should have been assigned from the inventor(s) to the applicant(s) prior to the filing date in Argentina. If the Assignment of Priority Rights document is not in Spanish, then it must be filed together with a Spanish translation, verified by Argentine Sworn Translator. This document does not require notarization or legalization as long as it is the originally signed document.

i. If the priority application was filed by more than one applicant, the signature of only one of them is sufficient to assign the priority rights of the application.

ii. The assignment form provided above has retroactive effects. If this form is not used, it should be noted that the assignment must be dated either prior to the filing date of the application in Argentina, or the priority date, whichever is later.

iii. If a copy of the document is submitted, the ARPTO will issue an office action requesting the original document.

iv. If the title of the invention is stated in the assignment instead of the application number, then the ARPTO will issue an office action requesting a new assignment.

Full name and address (including city, state, postal code and country of residence) of the applicant(s) must be informed at the moment of filing. In the case of natural persons, their ID number and marital status must be stated in the Application Form.

If there are two or more applicants, the right will be equally divided among them unless stated to the contrary in the Application Form.

TECHNICAL FORMALITIES

The nature of the invention (title) must be determined according to the Locarno Classification.

In the case of Industrial Models, the first—or main—figure must be in perspective of the Model in question. Additional views (e.g. top plan, bottom plan, side elevation views) must be also filed in order to fully describe the Model (up to six additional views are allowed). Only one view is allowed on the same page.

As for Industrial Designs, the first—or main—figure is the design itself applied to the industrial product where it is used. Usually, there is no need for additional views, given that a design is a two-dimensional configuration.

Multiple Models or Designs can be filed in a single application (i.e. multi-design applications are available). An application can include up to twenty (20) designs as long as they are all applied to products of the same class of the Locarno International Classification. However, when the Designs/Models belong to different Locarno classes, the multi-design application will have to be divided (i.e. by means of a divisional application and paying the relevant fees), but keeping the same priority date.

It is not necessary to file a description of the Industrial Design/Model.

The parts of the model or design that are not intended to be protected, as they belong to the public domain, should be shown with dashed lines. In the case that the illustration of ornamental details requires dashed or dotted lines due to the nature of the product (such as ornamental stitches in footwear or handbags) this condition will have to be explicitly indicated in the first figure or in the description (if filed).

No cuts or internal parts of the model that are inaccessible for the user during normal use of the product can be shown. Figures must only show the external appearance of the object.

A magnified area of a part of the Model/Design may be shown to illustrate the part in greater detail. The area to be enlarged must be indicated by a very thin line from where the original area is (trying to avoid obscuring the design) and enclosing the magnified area by a circle.

Modes of using the Model/Design, such as in its open, folded, or recessed position, may be included in separate sheets. The first figure cannot be claimed as mode of use.

Drawings can be used to determine particularities such as transparencies and to distinguish a polished surface from a rugged one or an open area from a solid one, should the Model/Design require it.

Only explanatory texts are allowed in the lower part of the Model/Design sheet and only if no description of the Model/Design is filed. Explanatory texts may include indications such as modes of use, transparent parts or dashed lines to indicate stitches. Additionally, if the description of the Model/Design is not filed, positional views must be indicated besides the corresponding figure number. Text, trademarks, logos, captions, or slogans cannot be included in the Model/Design unless blurred out. Another option is to write “XXXX” instead of the desired item (such as text, trademark, logo, caption, or slogan) and to mention that the space indicated by “XXXX” is reserved for desired item in the description of the corresponding Figure.

Kits (sets of articles where the articles show an aesthetic unity such as dinnerware, furniture sets, chess sets, etc.) are also allowed. In that case, the first -or main- figure must be a general perspective of the whole set. Then, each individual piece of the set is showed as would happen with a single model.

Graphical representations such as photographs, vector graphics, 3D renders are acceptable provided that the model is shown on a white background. The applicant must choose only one mode of representation; it is not possible to use more than one mode of representation in the same application.

The protection scope of black and white photographs is greater than those of color.

In any of the cases, Models/Designs can be filed in color or in grayscale when a specific color is not claimed, maintaining the same color in all positional views.

A mechanism cannot be protected by an Industrial Model. Industrial Models do not protect the functionality of a product.

An official search may be requested at the ARPTO based on bibliographic data (for instance, priority) or a topic.

On the other hand, Model/Design surveillance about either a subject within a specific technological field or an organization such as a competitor may also be requested at the ARPTO. This service consists of a one-year term of Model/Design surveillance; the PTO will provide three (3) reports with updates relating to new Model/Design applications within a specific technological field or submitted by a particular organization or inventor.

Official Actions can be raised if a formal defect (either technical or administrative) is detected. In that case, the applicant must respond the O.A. within twenty (20) working days from its notification date. If the objections are not overcome with the first response, a second O.A. will be raised granting the applicant ten (10) working days from its notification date to file the response. In the case the objections are not overcome with the second response, a third and final O.A. will be raised granting the applicant ten (10) working days from its notification date to file the response. Once the final response is filed with the corresponding corrections or having failed to file the response within the legal term, the Design Office will issue its decision granting or rejecting the Industrial Design/Model. There are automatic extensions of time available to respond office actions.

Once the application has approved the formal examinations, the Design Office grants the Industrial Model or Design and notifies it accordingly. In other words, the Office does not perform a Substantive Examination of the Model/Design for novelty.

At the request of the applicant, the publication of the design may be postponed for a maximum of six (6) months from the registration date, upon payment of the relevant fees.

In case of a dispute regarding the novelty of a granted design, it must be settled in the Federal Courts. Please click here to see a schematic overview of the procedures relating to Legal Disputes in IP matters in our country.

As from 2016, all Industrial Model or Design certificates are issued in electronic format.

The application for a renewal (there are two renewal periods of five (5) years, each) must be filed within six (6) months before the expiration of the validity term. There is a grace period of six (6) months, to request the renewal once the term has elapsed.

In the case of renewals of multi-design registrations, the renewal application will have to indicate that all the Designs/Models are to be renewed or, if the renewal is not requested for all the Designs/Models, which Designs/Models are to be renewed.

A single renewal application can be filed in relation to two or more Designs/Models independently of them belonging to the same multi-design registration as long as the owner of each registration is the same.

Industrial Designs Models granted in violation of the Law are null.

The infringement of the inventor’s rights are considered as counterfeit and punished with imprisonment and fine.

Criminal participation and complicity are applied in accordance with the Argentine Penal Code.

In addition to the penal actions, the owner of the Industrial Design or Model may start civil actions for the forbidding of the continuation of the illegal exploitation and to obtain a compensation for the suffered prejudice.

Provisional remedies may be requested.

Anyone having in his possession objects under infringement must provide complete information concerning the name of the person that sold or supplied said objects, the amount and value of those objects as well as the time the products began to be sold.

The plaintiff may demand a bail bond from the defendant in order to prevent the same from interrupting the exploitation of the invention. In case the latter wishes to continue with said exploitation, and, in the absence of the bail bond the former may ask the suspension of such exploitation providing him a convenient bail bond, in the case it were requested for.

Federal judges having jurisdiction in Civil and Commercial Matters are competent concerning civil actions. The Federal Judges having jurisdiction in Criminal and Correctional Matters are competent concerning penal actions.

Any person (individual or company) with a legitimate interest may bring a nullity action within the Federal Court.

The decision can be appealed to the Chamber of Appeals and, under certain considerations, to the Supreme Court.

3. ASSIGNMENTS & CHANGES OF NAME

ASSIGNMENTS

Industrial Models/Designs may be transferable and licensed in totality or in part. The assignment of the Model/Design shall become enforceable against third parties, only once it has been recorded before the ARPTO.

The following are the required documents for recording an assignment:

a. Assignment document: Must be signed by both parties. If a party is a foreign person, the signature must be notarized and legalized by Apostille or by the Argentine Consulate. The notary must attest that the representation and faculties invoked for carrying out the act have been proven in due form. In order to download a Model/Design Assignment Form, please click here.
b. Original certificate of registration in Argentina if the Model/Design has been granted. It should be noted that the filing of this document is optional and does not obstruct the procedure of recording the assignment. However, the certificate showing the new owner will be required at the time of enforcing the right.
c. Power of Attorney signed by the party, notarized and legalized (by Apostille or by the Argentine Consulate), unless included in the assignment document is also required.

All the documents must be original (copies are not allowed), must be in Spanish or filed together with a sworn translation into Spanish performed by an Argentine Sworn Translator and legalized by the Sworn Translators Association of the City of Buenos Aires (CTPCBA).

The following are the rules regarding consideration:

a. Consideration need not be stated.
b. A nominal consideration may be stated.
c. The amount of U$S 1.00 is accepted.

Assignments may be made with or without goodwill and it is not necessary to refer to goodwill in the deed.

Pending applications may be assigned. The assignment will be recorded prior to its registration.

The procedure starts with the filing of the assignment form together with all the above-mentioned documentation. Once this form is filed, the ARPTO will examine the documentation in order to verify its validity.

The PTO will conduct a study verifying that the documents submitted meet the formal requirements.

Once the assignment has been approved by the PTO, the Office will issue a notification certifying that, in light of the filed documents, the assignment has been recorded in favor of the assignee. This document issued by the ARPTO is the proof of the assignment.

CHANGES OF NAME

The following are the required documents to record a Change of Name:

a. Change of name document (Certificate of Registry), signed by a notary attesting the change of name, and legalized by Apostille or by the Argentine Consulate. Please click here to download a Change of Name Form. Otherwise, a legalized certification of change of name of the company, issued by the competent authority in the corresponding country, must be filed.
b. Power of Attorney signed by the applicant (or owner), notarized and legalized (by Apostille or by the Argentine Consulate).

All the documents must be original (copies are not allowed), must be in Spanish or filed together with a sworn translation into Spanish performed by an Argentine Sworn Translator and legalized by the Sworn Translators Association of the City of Buenos Aires (CTPCBA).

The procedure starts with the filing of the change of name form together with all the above-mentioned documentation. Once this form is filed, the ARPTO will examine the documentation in order to verify its validity.

The PTO will conduct a study verifying that the documents submitted meet the formal requirements.

Once the change of name has been approved by the PTO, the Office will issue an ownership update stating that a change of name has been filed and also certifying that, in light of the filed documents, the change of name was recorded in favor of the assignee. This document issued by the ARPTO is the proof of the change of name.

The registrant may effect all post-recordation actions under the new name.

MERGERS

Recordation before the ARPTO is required.

The following are the necessary documents to record a Merger:

a. A certificate attesting the merger issued by the Registry of Companies or by Notary Public or by any other competent authority according to the laws of the country where the merger took place. Legalization by Apostille or Argentine Consul is required. Otherwise, it is also acceptable to submit an assignment document signed by both legal representatives (it can be the same person). If a legal representative is a foreign person, the signature must be notarized and legalized by Apostille or by the Argentine Consulate. The notary must attest that the representation and faculties invoked for carrying out the act have been proven in due form. In order to download a Model/Design Assignment Form, please click here.
b. Original certificate of registration in Argentina if the Model/Design is granted. It should be noted that the filing of this document is optional and does not obstruct the procedure of recording the assignment. However, the certificate showing the new owner will be required at the time of enforcing the right.
c. Power of Attorney signed by the applicant (or owner), notarized and legalized (by Apostille or by the Argentine Consulate).

All the documents must be original (copies are not allowed), must be in Spanish or filed together with a sworn translation into Spanish performed by an Argentine Sworn Translator and legalized by the Sworn Translators Association of the City of Buenos Aires (CTPCBA).

The transfer to the surviving entity of rights arising from registration becomes effective against third parties.