Case Study: Industrial Designs in Argentina

Background
Mr. A is a talented Italian lamp designer, owner of a lighting company called “Exclusive Designs”. In 2019, Mr. A designed a collection
of three lamps inspired in the city of Buenos Aires for a well-known Argentine decoration store. Following his lawyer’s advice, he
registered the three lamps as industrial designs in Argentina. To the surprise of Mr. A, one of the lamps became a real success in
Argentina.
Considering the increasing demand of Mr. A´s lamp design, a local lighting company located in Buenos Aires started to manufacture
and commercialise Mr. A’s lamp without his authorisation.

Actions taken
When the Italian designer became aware of the infringement, he contacted an Argentinian intellectual property lawyer. After
analysing the case, he found out that, seven months before the application for the lamp design registration in Argentina, the Italian
designer exhibited the lamps at Euroluce, a public event held in Milan. This exhibition affected the novelty of the design, an essential
requirement for registration.
The expert warned Mr. A that if he decided to initiate a judicial process to obtain compensation for the damages caused due to
the infringement, there would be a high risk, since the IP attorneys representing the infringer could request the invalidity of the
registration of the design of Mr. A’s lamp, arguing lack of novelty (since it was exhibited more than 6 months prior to the filing date).
Thus, the expert recommended trying to solve the matter during the mandatory pre-trial mediation process or before the judge
issued a final decision.

Outcome
Mr. A obtained and executed a preliminary injunction against the offender and, as a result of this judicial measure, 1,200 infringing
lamps were detected. This evidence gave Mr. A an excellent position to negotiate and reach an agreement between the parties,
thus resolving the matter. Although the agreement did not imply the economic compensation expected by Mr. A, it was the best
alternative to prevent his industrial design from being declared invalid in terms of prosecution.

Lessons learned
• Seek legal advice before marketing your products and services in a new market.
• In Argentina, as in many other countries, an industrial design must be new to be registered. Do not reveal your creations before
protecting them. If the design was disclosed at a fair or exhibition, it is subject to protection provided the application is filed
within 6 months from the date on which the fair or the exhibition took place.
• Make sure to mention in the design registration application when and where the first disclosure took place. This mechanism can
help you avoid the loss of your intellectual property rights.
• The Argentine Patent and Trademark Office does not carry out a substantial examination regarding industrial designs, only the
formal requirements are verified. This means that they do not check the existence of previously registered industrial models
that are identical or similar to the one intended to be registered. It is under the jurisdiction of federal courts to solve disputes
about the novelty of a design.
• Litigation is not always the answer. Alternative dispute resolution mechanisms are very useful, (e.g. mediation and arbitration).

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