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Trademarks, Trade names and Intellectual Property

Abeledo Gottheil Abogados has a team of specialized and highly qualified lawyers on the subject, with the purpose of offering to its clients -both, local and foreign-, a comprehensive legal advice for the obtention, protection and defense, as well as for the commercial management and exploitation of their trademarks, letters patent, utility models, industrial models and designs, copyrights, software, domain names, labeling matters, advertising and promotion, and intellectual property rights in general.

Likewise, Abeledo Gottheil Abogados has a large worldwide network of correspondents, fully qualified on the subject, with the purpose of satisfying the needs of its clients in the protection of their intellectual property rights at a worldwide level.

Among the services rendered by this Law Firm in this area, the following stand out:

√ Legal advice on registrability, monitoring, protection and defense of trademarks and industrial and intellectual rights in general, including the handling of their registration before the competent authorities and their follow up.

√ Outline of strategies, courses of action and prosecution of lawsuits on the matter, such as suspension of oppositions to the registration of trademarks, nullity and cancellation of trademarks, suspension of use.

√ Management and handling of due diligences regarding important operations, submitting solid legal opinions and a careful analysis of the picture of the situation on matters related to intellectual property and personal data protection.

√ Legal advice on sponsoring matters and advertising and promotion agreements.

√ Vast experience and participation in important contractual negotiations involving sensitive matters of intellectual property. Active participation in the preparation of assignment, license, transfer of technology agreements, remittance of royalties and franchise agreements.

√ Advice regarding the protection and legal framework of geographical specifications and designations of origin, especially related to spirits.

√ Legal assistance in the launching of new products both, related to trademark matters and the labeling thereof and compliance with the local regulations on advertising and promotion.

√ Advice on patents in general, possibility of protection, opinion reports on patentability, validity and infringements, application of patents, utility model or industrial design.

√ Advice on the protection of Works by means of copyright, assistance with the corresponding registration proceedings.

√ Advice in the preparation and execution of contracts related to works and intellectual property rights. Advice and judicial representation in cases related to the protection of said rights.

√ Advice and representation in suits related to the adoption, acquisition, use and defense of the Internet domain names

Specific experience in particular important cases

Amongst many other important matters, Abeledo Gottheil Abogados has been involved and has rendered advice on the following matters:

i. 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 marketing 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 marketing of the trademark under the label questioned by the other party.

ii. 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.

iii. 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”.

iv. 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.

v. 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.

vi. 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.

vii. 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 for the Football World Cup 2014 with respect to the involved copyrights and fees. Negotiation of fees agreements.

viii. 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.

ix. 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 announcers 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.

x. 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 alleged 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.

xi. 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).

xii. 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 advice and representation of the TV channel “América TV” in connection with claims related to copyrights, intellectual property, and use of trademarks related to the television activity.

xiii. 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.

xiv. 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.

xv. 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.

xvi. Legal representation of “Jahro S.R.L.” in suits filed by “Harrods (Buenos Aires) Ltd” for the suspension of the use of trade name and of trademark. The lawsuits dealt with the validity of the trademark registration, use of trademark and trade name and opposition based on the trademark confusability due to phonetic, graphic and/or conceptual reasons. Both suits ended with a favorable result for Jahro since the two complaints filed by “Harrods” were dismissed.

xvii. Protection of Internet domains in favor of Pfizer S.R.L., Pepsico de Argentina S.R.L.,  Pharmanet S.R.L., América TV S.A. and Novelis  Do Brasil, among others.

xviii. Dispute Resolution Procedures before NIC Argentina to revoke domain names referred to important or well-known natural or legal persons registered by third parties without their due authorization, for clients such as the Salvation Army.

xix. Filing of complaints tending to the protection of inalienable rights such as the name of natural persons in cases of improper use thereof by third parties. Obtainment of precautionary measures to achieve the immediate suspension of the improper use of the name of well-known natural persons as from the filing of the complaint up to the rendering of the final judgment. Obtainment of progressive monetary punishments in favor of our clients so as to order the defendants to comply with the judgments that sustained our complaints.

xx. Advice on licensing and protection of software rendered in favor of Microsoft Argentina S.A., Peoplesoft, Alnova Technologies Corporation SL (a company related to Accenture), Lat 45 Inc, etc.

xxi. Representation of Microsoft de Argentina S.A. in prejudicial proceedings referred to the violation of their intellectual property rights on software.

xxii. Permanent advice to different clients as regards the tax treatment of software licenses, technical assistance, technology transfer, trademarks, patents etc. Application of agreements to avoid double taxation, drafting of said contracts in order to optimize their tax treatment at a national and provincial level (stamp tax). Registration of the contracts before the competent entities. Advice and treatment of adversary litigation with the National Tax Authorities regarding the registration of the contracts, imposition of special rates and deduction of expenses.

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Abeledo Gottheil Abogados