Abeledo Gottheil offers to its clients -both, local and foreign-. legal advice of excellence in judicial obtention, protection and defense, as well as commercial management and exploitation of their trademarks, letters patent, utility models, and industrial models and design, copyrights, software, domain names and intellectual property rights in general in sections of Fair Commercial Practices and Promotions and Advertising.
The Firm offers advice also in labeling, advertising and promotions (see the sections Fair Commercial Practices, and Advertising and Promotions).
With the purpose of controlling the registrations of its clients, the Firm has databases containing all the registrations and applications in Argentina, easing the search of background information prior to submitting opinions on the feasibility of registration.
Likewise, the Firm gives advice to its clients on local or foreign issues through its worldwide network of correspondents.
Among the services rendered in this field the following stand out:
Trademarks
- Search of background information and analysis of registrability.
- Trademarks custody and surveillance services.
- Proceedings for the registration, renewal and defense of trademarks before the National Institute of Industrial Property (Nacional de Propiedad Industrial).
- Preparation and presentation of answers to administrative observations or observations from the National Institute of Industrial Property in trademark proceedings.
- Negotiations and agreements tending to the withdrawal of oppositions filed by third parties. Negotiation of trademark coexistence agreements.
- Registration of assignment and license, change of line of business and transfer of rights agreements.
- Advice and drafting of assignment and license of property rights, transfer and license agreements.
- Preparation and presentation of oppositions and calls for attention regarding applications for registration of trademarks filed by third parties.
- Preparation and presentation of administrative appeals before the National Institute of Industrial Property.
- Management of trademark proceedings through foreign correspondents.
- Due diligence related to trademark matters.
- Outline of strategies, courses of action and management of litigation on the issue and trademark defense, trademark infringement lawsuits, suspension of use and precautionary measures.
- Advice in the protection and legal framework of geographical indications and denominations of origin, especially related to spirits.
- Experience and participation in contractual negotiations involving intellectual property issues. Active participation in the drafting of assignment, license, transfer of technology contracts, remittance of royalties and franchise agreements.
- Legal assistance in the launch of new products both, related to trademark issues, labeling and compliance with the local regulations on advertising and promotions.
- Assistance to stop trademarks infringement and seizure of goods or marketing bans.
- Trademarks registration with the Alert System at the Customhouse.
Patent
- Advice on letters patent in general, possibility of protection, opinion reports on patentability, validity and infringements, application of patents, utility model or industrial design, follow up of applications, registration and surveillance.
- Search of background information.
- Preparation and presentation of applications for registration.
- Preparation and presentation of answers to observations filed by third parties.
- Preparation and presentation of answers to administrative observations filed by the National Institute of Industrial Property.
- Preparation of assignment and license agreements.
- Intervention in the handling and maintenance of registrations in any country.
- Defense and oppositions to applications.
- Defense of registrations, lawsuits for annulment, lawsuits for infringements.
Copyright
- Advice on the protection and registration of works and contract on works before the National Bureau of Copyrights (Dirección Nacional de Derecho de Autor) at a local and international level.
- Advice and judicial representation in causes related to the protection and defense on copyrights.
- Advice in the preparation and execution of contracts related to works and intellectual property rights.
Internet Domains
- Advice and representation in judicial proceedings related to the adoption, acquisition, use and defense of Internet domain names.
- Presentation and follow up of the Internet registration proceeding before the competent agency.
Transfer of Technology
- Advice and drafting of contracts which purpose comprises transfer of technology and know-how.
- Advice in proceedings for the registration of contracts before the Transfer of Technology Bureau of the National Institute of Industrial Property.
Litigation & Recent Representations
- Legal representation of Speed Publicidad S.A.C.I.F. (Cepas Argentinas) in the precautionary measure applied for and ordered by the Civil and Commercial Federal Appellate Court against El Carmen S.A., ordering the suspension of use and commercialization of the beverages containing the trademark “POMELADA” to distinguish the product called “Citric Pomelada with mint and ginger” of El Carmen S.A.
- Legal advice to Compañía Andina S.A. Orfila (Cepas Argentinas) in a preliminary injunction for the suspension of use filed by Grupo Peñaflor S.A. in 2014. The purpose of said measure was to obtain the suspension of use and commercialization of the wines trademark “Suc. Abel Michel Torino” under a certain label, allegedly infringing a previous agreement executed by the parties many decades before. The legal framework regarding the application of section 50 of the TRIPS, theory of parallel legal actions (teoría de las vías paralelas), performance of contracts and trademarks confusability guidelines was claimed. Finally, a suspension of the precautionary measure was obtained for a certain term, after which the Federal Appellate Court having jurisdiction in Civil and Commercial matters, in view of an appeal filed by Grupo Peñaflor S.A., understood that it was ineffective to review the decision of the lower court since the term of suspension had ceased and Compañía Andina S.A. Orfila had proved the suspension of the use of the commercialization of the trademark under the label questioned by the other party.
- Advice, outline of strategy and legal advice to Cepas Argentinas S.A. in different conflicts related to the trademarks “Terma”, “Gancia”, “Dr. Lemon”, among others. Especially, the Firm has carried out different proceedings in view of trademarks infringements, achieving the closing of agreements on the suspension of damaging conducts and other important issues for the protection of the client’s trademarks. Likewise, at present we are representing the client in a suit with The Coca Cola Company related to an alleged contractual non-performance.
- Filing of complaint against a company of the City of Río Cuarto, Córdoba, on behalf of Dole Food Company Inc., with the purpose of obtaining the suspension of the trade name “Dole” as well as the corporate name Dole S.A., for the infringement to the rights acquired on the very well-known trademark “Dole”, as regards fresh and canned fruits. After going through the different stages, inclusive after filing a Federal Extraordinary Appeal (which was dismissed), it was resolved that the confusability was evident and that the coincidence of the name of the defendant with the trademark “Dole” could not be a miraculous coincidence, therefore the suspension of the use of the trade name “Dole”, the withdrawal of all the elements –such as signs, fliers and, stationery-, containing said name was achieved, as well as the modification of the corporate name by another one that was not confusable with the well-known trademark “Dole”.
- Legal advice to Swarovski AG (an internationally well-know company as a result of its crystals), in a suit for the suspension of the opposition to the trademark registration based on the fact that the trademark “Swarovski” is well-known.
- Filing of complaint for the suspension of opposition on behalf of Gameloft S.A., a renowned French company that develops games software for cell phones and other technological devices, to obtain the registration of one of its trademarks, against an Argentine company devoted to games of chance. Finally, in view of the force of the arguments of the distinctive nature of the trademarks in conflict, the defendant abided by the claim and plainly and simply withdrew the opposition at courts.
- Development of strategy, filing and prosecution of lawsuits at courts on behalf of the laboratory Pfizer (main pharmaceutical company at a worldwide level) tending to obtain the acknowledgment and application of the intellectual property right set forth in section 39.3 of the Agreement on Trade-related aspects of Intellectual Property (ADPIC) that protects non-disclosed information and confidential data obtained in the process for the creation of innovative medicinal specialties. Citing of the applicable legal framework in order to guarantee the effective data protection of tests developed by innovative laboratories against their unfair commercial use by third parties in connection with the regime in force on the registration and authorization for the marketing of similar medicines in Argentina.
- Participation in conflicts with the associations that represent copyrights, such as SADAIC (Argentine Association of Songwriters and Composers) and SAGAI (Argentine Association of Actors and Interpreters), in claims of fees allegedly owed for the use of copyrights managed by said associations. Advice in campaigns launched with respect to the involved copyrights and fees. Negotiation of fees agreements.
- Representation of Searle Ltd., a pharmaceutical company of Pfizer group, as plaintiff in an international arbitration proceeding under the rules of the International Chamber of Commerce, in a contractual dispute against one of the main national laboratories, which includes the treatment and debate of specific interesting investigation and development matters for the pharmaceutical industry, related to the protection of innovative pharmaceutical products under the patents regime and other intellectual property rights, such as data protection.
- Advice to Torneos y Competencias S.A., producer of sport shows to be broadcasted in open and cable television, in connection with the negotiation of different contracts, among which the contracts executed with the Argentine Football Association (Asociación de Fútbol Argentino) stand out. Said contracts were related to television rights for the exclusive broadcasting of local championship games; with open TV channels and negotiation of contracts with football clubs (Club Atlético River Plate, Club Atlético Boca Juniors, among others).
- Legal representation of PepsiCo de Argentina SRL in the lawsuits filed by the International Federation of Football Association (FIFA) against PepsiCo. At first, said complaint had the purpose of preventing the broadcasting of certain advertising campaigns issued by PepsiCo during the football World Cup which, as alleged by the FIFA, linked Pepsi trademark products with football and the world cup organized by said International Football Federation. The main complaint intended also to obtain an economic compensation from PepsiCo. for the presumed violation of the FIFA’s trademark rights and the consequent damages caused. In such sense, the lawsuit dealt with the scope and extent of the FIFA’s trademark rights related to the Football World Cup and the power of the advertisers who, without being its official sponsors, intended to recall such event to advertise their products. After the pendency of the lawsuit in the lower courts, the results thereof favored PepsiCo since, prior to the rendering of the judgment, the FIFA abandoned the action and the right of action without receiving any compensation whatsoever from PepsiCo.
- Legal representation of PepsiCo. de Argentina SRL in the lawsuit filed by The Coca–Cola Company against Pepsi Cola Argentina SACI. The purpose of the complaint was the final suspension of an advertising campaign launched by Pepsi Cola called “Pepsi Challenge” and the compensation of the presumed damages that the plaintiffs argued to have suffered as a consequence of the presumed unfair use of the trademark and of comparative advertising. The lawsuit dealt with the presumed infringement to the trademarks law for the unfair use of other parties’ registered trademarks, the lawfulness of comparative advertising and its scope according to the regulations in force in the Argentine legal system. After the pendency of the lawsuit, the results favored PepsiCo’s position since the lower courts dismissed the complaint, and the judgment sustained that no trademark rights were violated and that the use of comparative advertising was not illegal. Coca Cola filed an appeal against it and prior to the rendering of the Court of Appeals’ judgment, Coca-Cola reached an agreement with Pepsico abandoning the action and the right of action against PepsiCo and its codefendants.
- Legal representation of and advice to América TV S.A. (one of the most important Argentine TV channels) in judicial conflicts with independent TV producers in the defense of contractual commitments referred to the formats of TV programs.
- Legal representation of América TV S.A. in the lawsuit captioned “Mattes R. et al v. Telinfor S.A. et al, damages” in which America TV S.A. was a codefendant. The lawsuit discussed the authorship, intellectual property and trademark rights, by virtue of the creation, organization and publicity of a contest related to sports, which was broadcasted by América TV channel.
- Advice to the Italian Hospital (Hospital Italiano) of Buenos Aires in the planning and launching of its publishing seal. Preparation of several contracts referred to the involved copyrights and obtainment of the trademark identifying the publishing seal.
- Legal representation of Grandes Tiendas C & A Argentina S.C.S. in a lawsuit filed by Levi Strauss & Co for the suspension of the trademark use. The lawsuit involved the scope and violation of the trademark rights related to registered designs (typical of the clothes marketed by “Levi´s”). Scope, protection and powers of the owner. The lawsuit ended in the mediation stage due to the parties’ agreement.