In April, through Disposition DI-2024-141-APN-DNM#INPI, published in Bulletin 5563, the Argentine National Industrial Property Institute (INPI) regulated the registration of “phrases that came into general use and highly offensive signs”.
This provision emerged as a result of a significant increase in trademark applications using popular phrases spoken by public figures, such as “QUÉ MIRÁS BOBO, ANDA PÁ’ ALLÁ” by Lionel Messi, or the expression “NO HAY PLATA” by the President Javier Milei, as well as the term “LA SCALONETA”, which refers to the Argentine national soccer team.
With this decision, the INPI introduced new criteria to evaluate the viability of registering trademarks associated with celebrities and signs considered highly offensive, providing new interpretations of articles 2 (b), 3 (e) and 4 of the Trademark Law 22.362.
Key Aspects of the New Regulation
The new regulation highlights two main points:
- Phrases associated with certain personalities and that have entered common use: According to Article 2 (b) of Trademark Law 22.362, advertising phrases that have entered common use before the registration application are not considered trademarks.
As a result, the INPI may issue an observation upon becoming aware of such an application.
- Manifestly offensive signs: The analyst may take an official action in accordance with Article 3 (e), which prohibits the registration of signs contrary to morality and good customs, and Article 4, which requires the applicant to have a legitimate interest, when it comes to registering signs deemed offensive.
A recent example of this is the application for the current president’s phrase: “NO HAY PLATA”, which was dismissed for being considered contrary to morality, good customs, and failing to meet the criteria of commercial good faith.
It is important to note that phrases that have not yet entered common use, or that are in common use but are sought to be registered by the person who originally coined them, can still be requested. For instance, the phrases of Ms. Mirtha Legrand, such as “Como te ven te tratan” and “Si te ven mal te maltratan. Si te ven bien te contratan,” among others, were applied for in various classes by Ignacio (Nacho) Viale, in his capacity as Ms. Legrand’s grandson and representative. This application was validated by the consent and direct relationship with the public figure.
With this new disposition, the INPI intends to prevent the registration of trademarks by third parties who try to take unfair advantage of the image and reputation of public figures, as well as to ensure a more respectful commercial and social environment. This includes discouraging the registration of words or phrases that may be harmful or offensive to human dignity and social norms.
