Brief analysis on the different ways Argentine\'s Customs can act to fight against trademark piracy. Procedures "ex officio"; upon the party\'s request or as the result of the registration of the mark in the "Alert System marks"at the Customs.

1. BORDER MEASURES IN THE ARGENTINE CUSTOMS
1- Powers of the Argentine Customs
Since the legislative reform in the year 2004, regulated between 2006 and 2007, the Argentine
Customs expressly has the power to prohibit the importation and exportation of goods which bear
counterfeited trademarks, which are pirate imitations or which might otherwise infringe third
party’s trademark rights recognized by the Argentine laws. These powers are implemented by the
Customs Trademark Fraud Division.
It is important to point out that the Customs not only exercise these powers over imported or
exported goods to or from Argentina, but also over those goods that are in transit to another
country.
2- Proceeding
2.1 Ex-officio proceedings
Each time the Customs encounters, in the course of its duties and by virtue of a simple verification,
goods bearing a counterfeit or allegedly counterfeit trademark, and their owner is unable to show
any license agreement authorizing him/her to import, export, trade or manufacture said goods, the
Customs shall proceed as follows:
a) If the goods are evidently counterfeit,
- The Customs shall stop the course of destination and refer the proceedings to the Customs
Legal Proceedings Department or the competent Customs Manager, with the corresponding
notice, who shall conduct a process in which the trademark owner is not a party.
- If in these proceedings it is proved the illegal character of the goods, the goods are
destroyed;
b) If the counterfeit cannot be established by a mere verification,
- The Customs shall require the participation of the Trademark Fraud Division, who shall
collect information from the competent trademark authorities (National Board of Industrial
Property), regardless of any other relevant investigation it might consider convenient, in
order to establish who the real owner of the allegedly counterfeit trademark is and summon
him/her in order to explain the condition of the goods regarding their character of original or
false or the existence of any license or authorization to commercialize them.
- This should be done within 3 days, during which period the goods may be withheld. Once
the trademark infringement is confirmed, the proceedings are referred to the Customs Legal
Proceedings Department or Manager, who shall conduct a process to which the trademark
owner is not a party. If the illegal character of the goods is established, the goods are
destroyed.

2. 2.2 Upon the party’s request
Trademark owners who are aware of an upcoming import or export of goods infringing their rights
can give notice of this to the Customs by means of a written application. The Customs shall proceed
to verify said goods following the proceeding mentioned above.
The implementation of these border measures does not mean that the party cannot simultaneously
resort to the Justice in order to request any other kind of complementary preliminary injunction, as
those set forth by Art. 50 of the TRIPS or Section 38 of the 22,362 Argentine Trademark Act.
2.3 Alert Entries System
In order to improve the exercise of the powers mentioned above, in the year 2007, the Federal
Administration of Internal Revenues (“AFIP” in Spanish), of which the Customs General Division
depends, created a procedure for the control of goods with counterfeit trademarks called “Alert
Entries System”.
This system operates through the voluntary registration in a Registry of those trademarks
registered in Argentina that their owners may wish to record.
Those interested in the registration of their trademarks in the “Alert Entries System” shall
have to submit to the Customs Control General Section of the Customs General Division a written
application, having the status of an affidavit, containing the information required by the
corresponding regulations, namely: applicant’s particulars, trademark’s particulars, characteristics
of the goods, origin of the goods, habitual destination, the trademark owner’s legal representatives'
contact information, etc.
This record shall be loaded to the MARIA Computer System (SIM) so that when an
importer submits the declaration of the goods he/she intends to enter the country, he/she shall have
to declare whether the goods in question bear a trademark, and in that case, which one.
If the reported trademark coincides with a trademark recorded in the Alert Entries System
and the importer is not one of the representatives authorized by the trademark owner, the shipment
is blocked for 3 days and the trademark owner is notified so that he/she can appear to verify the
infringement.
Further, the owner of a trademark recorded in the Registry shall have a “Fiscal Password”,
with which he/she will be able to be informed of any blocked destinations produced the day before
by accessing the services of the Customs “Electronic Desk”. If the trademark infringement is
verified, the import is stopped and the corresponding legal and administrative proceedings are
initiated.
If the importer declares that the goods do not bear a trademark, he/shall have to specify if
he/she will commercialize them as such or if any trademark will be affixed to the goods before they
are launched to the market. The Customs has powers to verify the veracity of the declaration.

3. This system facilitates the task of the Customs and allows the trademark owner to have a
more detailed control of the goods entering the country with his/her trademark.
3- Industrial Model and Designs (design patents)
In the year 2009, the Customs extended their activities related to the control and trace of
counterfeit goods to those products that infringe industrial models or designs.
Although industrial models and/or designs cannot be recorded in the “Alert Entries System”,
the owner of any of them who is aware that goods that might affect and/or damage his/her rights are
about to enter the country, shall be able to submit – with sufficient notice – a written application to
the Customs requesting they are allowed to be present at the time the Customs controls the goods,
to which effect he/she shall be duly notified of the place, date and time in which said act will take
place.
If the Trademark Fraud Division considers it an infringement, it will proceed in the same
way as when dealing with trademarks.
4- Conclusion
We have closely and actively followed the development of this new legal system, attending
the Customs Forums against Trademark Fraud created by the Customs, in order to join forces and
criteria between the public and private sectors in the fight against piracy.
We have carried out many proceedings at the Customs seizing false or counterfeit goods of
different kind (mobile phones, mp3, sweets, bags, pens and watches, among others) that infringed
our clients’ trademarks.
It is important to point out that we have done it with trademarks recorded in the Alert Entries
System mentioned above, and also, invoking trademarks not registered in Argentina but well-known
and protected abroad, based on the provisions of the Paris Convention for the Protection of
Industrial Property and the TRIPS.
We recommend record the trademarks of greatest interest with the Customs in the Alert
Trademark System.
Buenos Aires, August 31, 2011
GUSTAVO A. A. SENA ESTANISLAO MEZZADRI
SENA & BERTON MORENO