Saving a Descriptive Mark: Acquired Distinctiveness under Argentine Law 22,362

Argentine trade mark law requires that every registrable sign possess distinctive character — the capacity to distinguish one trader’s goods or services from those of another. Article 1 of Law 22,362 establishes this principle by defining a trade mark as any sign with “distinctive capacity.” Signs that merely describe the kind, quality, characteristics, origin, or intended purpose of the goods will be refused registration. However, Argentine law recognises that a descriptive sign can, through extensive commercial use, acquire a secondary meaning that transforms it into a registrable trade mark.

What Is Refused as Descriptive

Under Article 3 of Law 22,362, the following categories of signs are not registrable:

• Generic names: Terms that are the common designation of the goods or services.
• Descriptive terms: Words or signs that directly describe the nature, quality, merit, quantity, purpose, value, origin, or manufacturing method of the goods.
• Signs lacking distinctive character: Any element that the relevant public would not perceive as a trade mark.
• Activity designations: Business names or descriptions of commercial activities that lack independent distinctiveness.

INPI continues to examine these absolute grounds ex officio, even under the new streamlined examination framework introduced by Resolution 583/2025. A mark that is purely descriptive will still receive an office action from the examiner.

The Acquired Distinctiveness Doctrine (Secondary Meaning)

Argentine case law has long recognised the principle that a descriptive sign may be registered if it has acquired a secondary meaning (significado secundario) through use. This doctrine was given express statutory recognition when Decree 242/2019 — the regulatory decree implementing the 2018 amendments to Law 22,362 — excluded from the list of non-registrable signs shapes and colours that have acquired distinctiveness through use. While the decree specifically mentions shapes and colours, the underlying principle extends to all categories of descriptive signs, consistent with established Argentine judicial precedent.

To establish acquired distinctiveness, the applicant must demonstrate that, through prolonged and intensive use in the Argentine market, consumers have come to perceive the descriptive sign not as a description of the product but as an identifier of a specific commercial source.

Evidence That Supports an Acquired Distinctiveness Claim

Argentine courts and INPI evaluate the following categories of evidence when assessing whether a descriptive mark has acquired secondary meaning:

1. Prior Registrations

Ownership of one or more prior registrations of the same trade mark in Argentina, particularly in different classes or for related goods, demonstrates that the mark has been treated as a source identifier over time.

2. Duration and Continuity of Use

Evidence of continuous commercial use in Argentina over a substantial period. Invoices, distribution agreements, customs records, and product packaging showing the mark in commercial use are relevant. The longer and more consistent the use, the stronger the case.

3. Sales and Market Presence

Annual sales revenue and volume data for goods or services sold under the mark in Argentina. Market share data, distribution network information, and evidence of presence across Argentine provinces strengthen the claim.

4. Advertising and Promotion

Advertising expenditure in Argentina, copies of advertisements (television, print, digital, outdoor), media buying records, and marketing campaign materials. Evidence of nationwide advertising reach is particularly valuable.

5. Consumer Recognition

Statements by merchants and consumers confirming that they recognise the mark as identifying the applicant’s goods or services, rather than as a descriptive term. Consumer surveys, while not commonly used in Argentina, can also support the claim.

6. Third-Party Recognition

Media coverage, industry awards, trade association references, and other third-party acknowledgements that treat the mark as a brand rather than a descriptive term.

Procedural Pathways

An applicant can raise the acquired distinctiveness argument at several stages of the trade mark prosecution process:

• In the response to an office action: When INPI raises a descriptiveness objection, the applicant has 30 calendar days (with limited extensions) to file a response arguing acquired distinctiveness and submitting supporting evidence.
• On appeal: If INPI rejects the application, the applicant may file an appeal before the Federal Court of Appeals in Civil and Commercial Federal Matters. The court will consider the acquired distinctiveness argument and the supporting evidence de novo.
• In opposition proceedings: If a third party opposes an application on descriptiveness grounds, the applicant can respond with evidence of secondary meaning.

Limitations

Acquired distinctiveness cannot overcome all grounds for refusal. It does not apply to signs that are contrary to public order or morality, marks that incorporate state emblems or official symbols, or marks that are deceptive. Additionally, generic terms — words that have become the common name for the product itself — generally cannot acquire distinctiveness because they have lost any capacity to function as source identifiers.

Strategic Recommendations

• Collect evidence from the start: If you use a descriptive mark in Argentina, begin organising commercial evidence (invoices, advertisements, sales data) from the earliest date of use.
• Focus on Argentine evidence: The acquired distinctiveness must be demonstrated in the Argentine market. International evidence may be supplementary but is not a substitute for Argentine commercial use.
• File inherently distinctive marks first: Where possible, adopt and register an inherently distinctive mark alongside any descriptive mark. This secures immediate protection while the descriptive mark builds secondary meaning.
• Prepare a comprehensive submission: When responding to a descriptiveness objection, present evidence across multiple categories (use, sales, advertising, consumer recognition) rather than relying on a single type of evidence.

Key Takeaway

Argentine law permits the registration of descriptive marks that have acquired secondary meaning through extensive commercial use. The evidentiary standard is demanding but achievable for brands with a genuine track record in the Argentine market. The key is to demonstrate that Argentine consumers perceive the sign as a source identifier, not merely as a description of the product. For applicants considering descriptive marks, proactive evidence collection and a comprehensive submission strategy are essential.