Argentina Argentine Argentinien Report Q169 in the Name of The

Argentina Argentine Argentinien Report Q169 in the name of the Argentinean Group by Ernesto O'FARRELL and Gustavo P. GIAY Criminal law sanctions with regard to the infringement of intellectual property rights 2. Substantive Law 2.1 Penal sanctions have been in force since long before the TRIPS Treaty was adopted by Argentina. A special Law improving penal sanctions related with infringement of software has been enacted after TRIPS. 2.2 Regarding trademarks, a special intentional element is not necessary, because the Law presumes that dealers are expected to keep accurate records of their commercial opera- tions, and should be able to prove the source from which they obtained the infringing goods, so that the owner of the trademark may prosecute the party or parties responsible for the infringement. This point of view has been ratified by a quite recent Supreme Court decision in re Sandys Confezioni S.P.A. (S. 350-XXII, March 13, 1990). With respect to copyright and patents, the courts normally require that the culprit has had a reasonable opportunity to be aware of the rights protected that he has infringed, which is almost equivalent to the requirement of an intentional element. In general, the burden of proof has to be assumed by plaintiff, except, with respect to trademarks and patents, when the culprit refuses to give proof and information regarding: a) the name and address of whoever sold or deliver the infringing goods, when such transaction took place, as well as to exhibit the respective invoices; b) the amount of units manufactured or sold and their price, as well as to exhibit the sale invoices. c) the identity and domicile of the persons to whom the goods were sold. The refusal to supply the above information, as well as the absence of adequate records regarding the infringing goods authorizes to assume that the person in whose possession the goods were found has participated in the counterfeiting or fraudulent imitation. 2.3 In principle, there are no differences between the acts of infringement of intellectual property, although criminal actions tend to be rare, because the burden of proof is generally stricter, and the litigation is more cumbersome and costly. Nevertheless, if a criminal action is instituted, the Criminal Court may also asses damages if so requested. In civil actions the terms of limitation are of three years after the infringement takes place, or one year after the owner of the trademark becomes aware of the infringement. 1 As regards criminal actions and the request for damages, the term of limitation is of two years. 2.4 Argentine Law does not permit the application of penal liability against a legal moral person for acts of counterfeiting, although it may be held liable for damages. 2.5 The penal Court has the capacity to appreciate the validity of an intellectual property, and to declare it invalid. 2.6 The different sanctions for infringement of intellectual property rights are: 2.6.1 Trademarks The Argentine Trademark Law 22,362 ("the Trademark Law") provides that imprisonment from three (3) months to two (2) years shall be imposed, in addition to which a fine from one million ($ 1,000,000) to one hundred and fifty million pesos1 ($ 150,000,000) may be levied upon those who: a) counterfeit or fraudulently imitate a registered trademark or tradename; b) use a counterfeit or a fraudulently imitated registered trademark or trade name, or one belonging to a third party without his consent; c) offer for sale or sell a counterfeit or fraudulently imitated registered trade mark or trade name, or one belonging to a third party without his consent; d) offer for sale, sell or otherwise market products or services with a counterfeit or fraudulently imitated registered trademark. The National Executive Power shall update the amount of the fine annually on the basis of the variation recorded in the index for general level wholesale prices, officially published by the National Institute of Statistics and Census. The aggrieved party may, regardless of the kind of action elected, apply for: a) seizure and sale of goods and other objects bearing an infringing trademark; b) destruction of the infringing trademarks and trade names and of all objects bearing same, unless they can be separated therefrom. Upon request, the Judge shall order the publication of the judgement at the cost of the of- fender, it the latter were condemned or defeated in the proceedings (Section 34 of the Trademark Law). The Trademark Law also provides in its section 38 that the owner of a registered trademark to whom information is brought of the existence of products bearing an infringed trademark may request the Court: a) the attachment of the products; b) the drawing up of an inventory and description thereof; c) the seizure of one sample of the infringing products. The certificate of registration must be filed and the address in which those products may be found must be provided to the Court, which will grant the so-called precautionary measures 'inaudita parte' (i.e. without hearing the other party). 1 One peso is equivalent to one US dollar. 2 The precautionary measures are useful to ensure evidence of the infringement. Likewise those measures are a means to find out the source of the infringing products, in the event the premises at which they are performed do not correspond to the manufacturer, as the person who is in charge of the place where the products are found must furnish information as to the name and address of the person who sold him the goods and exhibit the corre- sponding documentation (invoices or the like). If the attachment of the existing stock of questioned products is requested, the Court may ask the petitioner to post a bond, which may vary depending on the Court criterion. After the precautionary measures have been effected a Bill of Complaint must be filed within fifteen working days as from the performance of the said measures as otherwise the infringer may request the Court to return the seized products to him and to raise the attachment (in the event it had been requested and granted). We would point out that during the lawsuit the trademark owner may apply for an injunction based upon article 50 of the TRIPS Agreement. Argentine Courts have granted precautionary measures based upon Article 50 of the TRIPS Agreement that would prevent the infringer to make use of the infringing trademarks until a final decision in the case is ren- dered, provided the petitioner posts a bond to secure the damages it may cause if the injunction is later found to be wrongfully granted. 2.6.2 Patents Argentine Patent Law No 24,481 (the "Argentine Patent Law") sets forth the sanctions for the violation of its provisions. Section 75 establishes that the defrauding of the rights of inventors shall be deemed to be counterfeiting and shall be punished with imprisonment of from 6 months to 3 years and with a fine. The same penalty of Section 75 shall be imposed on those who knowingly: a) produce or cause to be produced one or more goods in violation of the rights of the owner of the patent or of the utility model; b) import, sell, offer to sell or market or exhibit or introduce into the territory of the Re- public of Argentina on or more objects in violation of the rights of the owner of the patent or the utility model (Section 76). The same punishment increased by one third shall be imposed on: a) the proxy, partner, advisor, employee or workman of the inventor or of his lawful successors who usurps or discloses the invention not yet protected; b) those who by corrupting a partner, proxy, advisor, employee or workman of the inventor or of his lawful successors, obtain the disclosure of the invention; c) those who violate the duty of confidentiality imposed by law (Section 77). A fine shall be imposed on anyone who, without being the owner of a patent or of utility model, or no longer enjoying of the rights granted thereby, makes use on his products or on his advertisements, of indications susceptible of inducing the public to error with regard to their existence. In the cases of repetition of the offences punished by the Law Nº 24,481, the penalty shall be doubled (Section 79). 3 Criminal participation and concealment shall be punishable pursuant to the Criminal Code (Section 80). In addition to criminal actions, the owner of the patent and his licensee, or of the utility model, may file a civil suit to prohibit the continuation of the illegal use and to obtain a redress for the damages suffered (Section 81). After submitting the patent certificate or the utility certificate, the damaged party, under the securities that the judge may deem necessary, may request the following preventive measures (Section 83): a) The seizure of one or more samples of the infringing product of the description of the incriminated procedure. b) The inventory or the attachment of the falsified goods and of the machines espe- cially intended for the manufacturing of the products or the performance of the incriminated procedure. According to Section 85, any person in possession of infringement products, shall give full information regarding the name of whoever sold them to him or obtained them for him, their quantity and value, as well as the time when their sale begun, under penalty of being con- sider as an accomplice. The Court office shall record the explanations given by the inter- ested party, spontaneously or at his request.

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