As explained in previous briefings, the new Civil and Commercial Code includes a series of rules referring, either directly or indirectly, to intellectual and industrial property matters which we have already reviewed in detail.
An important aspect that the new Civil Code affects is that related to actions for recovery regarding immaterial goods. In particular, we refer to the action for recovery in relation to trade marks.
The aim of the action for recovery is to obtain the restitution of the trade mark to its lawful owner. Trade Mark Law No 22,362 mentions the action for recovery in Section 11 but it does not expand on its regulation.
In the case of other immaterial rights, such as industrial models and designs, the action for recovery is specifically foreseen.
Likewise, it is understood that in the Patent Law, Section 31 establishes the setting that enables the exercise of the action for recovery when it states: "The granting of the patent shall be done with no prejudice to a third party with a better right than that of the applicant, and with no guarantee from the State concerning the usefulness of its object."
Until the new Civil and Commercial Code came into force (August 1 2015), the courts accepted lawsuits related to actions for recovery of trade marks, based on a broad interpretation of Section 11 of the Trade Mark Law.
However, Section 16 of the new code regarding goods does not mention immaterial goods, and Section 2253 expressly excludes immaterial goods from the possibility of being protected by the action for recovery.
Taking into account the new rules of the Civil and Commercial Code, now the question is how the case law related to actions for recovery will evolve.
Daniel R Zuccherino |
Obligado & Cia
Paraguay 610, 17th Floor
C1057AAH, Buenos Aires, Argentina
Tel: +54 11 4114 1100
Fax: +54 11 4311 5675
