Intellectual Property & Trademarks
Argentine law says a single color cannot be registered as a trademark. And yet Milka’s purple and Kodak’s yellow are protected marks. The answer lies in a rule that is routinely cited incorrectly, and that can rescue an application the trademark office has refused.
Yes, a color or a shape can become a trademark in Argentina, even though section 2 of Trademark Act No. 22,362 expressly excludes them. The key is section 2 of the Annex to Decree 242/2019, which implements the Trademark Act: where the sign has acquired distinctive character through use in the marketplace, the statutory bar falls away. The sign enters the register through a door the law deliberately leaves open.
Key point
Distinctiveness is not a fixed attribute. A sign born incapable of distinguishing anything can earn that capacity over years of use (what common law jurisdictions call secondary meaning), and a mark born distinctive can lose it if the public turns it into the common name of the product. A trademark is a living asset: it is either built up or eroded depending on how it is used.
Distinctiveness is a process, not a status
Most people approach trademark registration as a snapshot: either the sign qualifies or it does not. Commercial reality is different. Time changes how the public perceives a sign, and that shift can run in either direction.
Downward, a strong mark degrades until it becomes the generic name of the very thing it designates. That is what happened to Curitas (the Argentine equivalent of Band-Aid), Maizena, Cellophane, Nylon, Lycra, Walkman, Thermos and Jeep: consumers came to identify the product with the mark, rather than treating the mark as something that sets that product apart. Common law calls this genericide.
Upward, the opposite occurs. A sign that started out generic, descriptive or commonplace gradually accumulates meaning through use, until the public reads it as a genuine trademark. That is acquired distinctiveness, and it is our subject here.
Why it is called “secondary meaning”
The term comes from Anglo-American law and describes the mechanism well. A descriptive or generic sign carries a “primary” meaning: the literal, grammatical sense it conveys on its own. The Spanish word suave means soft. The color yellow is yellow.
Through sustained commercial use, that same sign begins to convey something more to the public: a particular commercial origin. That something more is the secondary meaning. It is secondary in chronological order, not in importance: where use is intense enough, the trademark function can end up outweighing the literal sense entirely. Nobody looking at a pad of yellow paper with adhesive along one edge thinks about the color first.
Argentine examples are plentiful. Milka’s lilac in chocolate, and that same shade in courier services for OCA. Kodak’s yellow in photography, and the same yellow on a pad of notes for Post-it. Ferrari red in automobiles. In none of those cases did the color, standing alone, have the slightest distinctive character on the day it was first used.
What the Argentine rule actually says
Precision matters here, because this is a point that is very often cited incorrectly. The rule is not in section 2 of Decree 242/2019 (that provision repeals the earlier Decree 558/81). It is in section 2 of the Annex, which is the implementing regulation itself. The text reads:
“Excepted from the exclusions referred to in section 2 of Act No. 22,362 and its amendments are those cases in which the sign, including the shape and the color for which registration is sought, has acquired subsequent distinctive character, as well as non-necessary or non-customary shapes possessing such character.”
Note the detail that makes all the difference: the provision expressly names shape and color. Section 2 of Act No. 22,362 declares unregistrable, among other things, the shape given to goods (subsection c) and the natural or intrinsic color of goods, or a single color applied to them (subsection d). The regulation opens precisely those two doors where distinctiveness has been earned through use.
This is not a local invention. Article 15.1 of the TRIPS Agreement leaves each Member free to adopt the rule: “Where signs are not inherently capable of distinguishing the relevant goods or services, Members may make registrability depend on distinctiveness acquired through use.” Its antecedent is Article 6quinquies, section C, of the Paris Convention, which requires that all factual circumstances be taken into account, “particularly the length of time the mark has been in use.”
The “SUAVE” saga: four judgments and fifteen years to defend a weak mark
The best Argentine illustration is not a case where the doctrine prevailed, but a litigation saga that shows how far it reaches and where it stops. Marval O’Farrell & Mairal’s review of the “SUAVE” judgments traces four decisions of the Federal Civil and Commercial Court of Appeals between 2010 and 2013.
The first round came in July 2010, in Unilever NV et al. v. Laboratorio Cuenca S.A. The court of first instance had invalidated the “SUAVE” applications in class 3 on the basis that the word was commonplace in cosmetics and lacked distinctive character. Division 1 reversed, and use weighed heavily in its reasoning: “SUAVE” was an unregistered mark in actual use since 1999 for shampoos and conditioners, with sales volume of 3,729 tonnes in a single year. The court added that suave was neither the necessary nor the customary designation of a shampoo, but an adjective denoting a quality.
The same judgment contained the fine print, however: the mark suffered from inherent weakness, and its owner would have to tolerate other composite marks incorporating the word suave. On that basis, the claim to stop a competitor from using “ISSUE SHAMPOO SUAVE” was dismissed.
The doctrinally decisive moment came in December 2011, in Conopco Inc. v. Colgate Palmolive Company. The defendant argued that secondary meaning simply cannot operate in Argentina, because it is incompatible with our attributive system, under which rights arise from registration rather than from use. Division 1 did not accept that argument: it held that the doctrine is compatible with the attributive system, noting that it is recognized in the European Union and in the Andean Community. What it did instead was decline to apply it on the facts, for a different reason: “SUAVE” was not a descriptive sign but a suggestive one, possessing distinctive character of its own. Where a sign is already inherently distinctive, it has no need for use to manufacture that quality.
The final act, in December 2013, settled the outer limit. The court held “PALMOLIVE SUAVE” and “SUAVE” not to be confusingly similar, on reasoning worth keeping in mind: the owner could not prevent a commonplace word from forming part of third-party marks, because doing so would produce an “intolerable monopolistic effect.” That was the consequence of having adopted a word in general use.
The commercial takeaway
A multinational needed four judgments and more than a decade of litigation to sustain a suggestive mark, and still ended up sharing shelf space with “ISSUE SHAMPOO SUAVE” and “PALMOLIVE SUAVE.” Choosing a weak sign is cheap on day one and extremely expensive over the twenty years that follow.
The other direction: when a mark dies of its own success
Genericide is the mirror-image risk, and it happens to the marks that won. Once the public starts using your mark as the name of the category, the sign stops distinguishing and starts describing. It is death by embrace.
Owners who understood the danger fought back. Xerox spent heavily on advertising campaigns to stop its mark from becoming a synonym for photocopying, and above all to curb the verb “to xerox” in the United States. Adobe has been known to write to website authors using the term “photoshopped,” asking them to say “modified by Adobe Photoshop software” instead.
There is even a reverse phenomenon, known as recapture. Singer had lost the word: consumers were using it for any sewing machine. Its owner mounted intensive advertising campaigns and succeeded in restoring the mark’s distinctive character, so that “Singer” functioned as a trademark once again. The return trip is possible, but costly.
What evidence is required (and what to start collecting now)
Here is the practical core. Acquired distinctiveness is not declared, it is proved, and the burden falls on the party invoking it. It is raised in response to an office action from the National Trademark Office, or later on appeal, always through counsel. These are the factors that carry weight:
Genuine and effective use, not merely advertising. This is the starting point. The question is whether the public came to perceive the sign as a mark because it encountered the sign in the market, not whether someone bought a great deal of media. Use must also relate to the goods or services claimed in the application.
Duration of use. Argentine law sets no fixed period. By way of comparison, United States law presumes acquired distinctiveness after five years of continuous use. A short but very intense campaign should not suffice: if it did, the best-funded advertisers could appropriate ordinary expressions and shut out competitors with fewer resources.
Territorial reach. Because the registration sought is national in scope, the reasonable standard is to establish distinctiveness throughout the country, or at least across the most densely populated areas.
Documented advertising investment. Television, radio, print, online and social media spend, supported by records of the amounts invested.
Turnover and sales volume. If the sign was used as a mark, people bought. The figures demonstrate it.
Evidence from the distribution chain. Statements from wholesalers, retailers, distributors and carriers who handled the branded goods.
Public perception. Consumer surveys, together with statements from chambers of commerce, industry associations or professional bodies in the relevant sector.
One point is frequently underestimated: filing a single category of evidence is rarely enough. Both the trademark office and the courts apply a demanding standard when asked to grant exclusivity over something that, in principle, everyone may use, so what works is a convergent body of evidence. And one reassuring clarification: it is not necessary to prove that consumers know which specific company makes the product. It is enough that they associate the sign with a single, determinate source.
The limits of a right earned through use
Securing registration by this route is not a blank cheque. Two limits are worth understanding before investing in the attempt.
The first concerns scope. Registration should cover only the specific goods or services for which use was proved. If the sign was used on gelatin desserts, it should not be granted across the entire dessert class. Distinctiveness was earned where it was used, not in the abstract.
The second is fair use, contemplated in Article 17 of the TRIPS Agreement. A competitor may continue to use the word in its literal sense, provided it does so in good faith and in a manner that does not cause confusion: without graphic emphasis, without giving it the appearance of a mark, and normally alongside its own sign. Breuer Moreno anticipated the point back in 1954, commenting on English and American case law: a mark valid under the rules of secondary meaning cannot prevent a third party from using the word honestly in its grammatical sense.
A worked example
Consider a confectionery producer in Córdoba that has sold alfajores (a filled biscuit that is an Argentine staple) since 2014 in packaging of one very particular shade of green, always the same, never varied. Twelve years of continuous use, distribution across the province and on the shelves of several regional chains, sustained spending on outdoor advertising and social media. One day a competitor launches an alfajor in packaging of a virtually identical green.
The instinctive reaction is that nothing can be done, because a color cannot be registered. With the implementing regulation in hand, the analysis is different: if it can be established that, within the confectionery segment of central Argentina, that green already signals a particular origin, there is a case for seeking registration and, from there, for enforcement. The work, and this is the essential point, begins long before: with the documentation accumulated over those twelve years.
The reasoning is the exact converse of the analysis we applied to the case in which OpenAI failed to register a mark on descriptiveness grounds: there the sign was excluded because it described the product, whereas here prolonged use is what can lift it out of that exclusion. And if you are still at the selection stage, it is worth reviewing how trademark prosecution before the Argentine trademark office works (in Spanish), because the best strategy remains never needing this doctrine at all.
Frequently asked questions
Can a single color be registered as a trademark in Argentina?
Not in principle: section 2, subsection d) of Act No. 22,362 excludes it. But section 2 of the Annex to Decree 242/2019 excepts from that exclusion colors and shapes that have acquired distinctive character through use. It must be proved, and the standard is demanding.
How much use is required?
Argentine law fixes no period. By comparison, United States law presumes acquired distinctiveness after five years of continuous use. Here the question is assessed case by case, according to the nature of the product and the intensity of use. A short campaign, however heavy, will rarely suffice.
If my mark has become the common name of the product, do I lose it?
That is the risk of genericide. It is neither automatic nor instantaneous, and it can be resisted: always use the mark alongside the generic product name, avoid using it as a noun or a verb, and act against improper third-party uses. The Singer case shows that a mark can even be recovered, though at considerable cost.
My application was refused as descriptive. Is this doctrine worth invoking?
It may be, where there are years of verifiable use and documentation to support it. It is raised in response to the office action or later on appeal, and the route should be assessed with counsel before deciding, because it requires a body of evidence rather than a single item. What can be started immediately is organizing the record: invoicing, advertising spend, dated packaging photographs and anything else establishing how long the sign has been in use.
Emiliano Sebastián HerreraCo-founder of Herrera & Flamenco Abogados, working in intellectual property, including trademarks, copyright and new technologies, with particular attention to protecting intangible assets and to the strategic use of these tools in business and creative projects.
Is your mark in the grey zone?
If an application has been refused as descriptive, if you have been using a sign for years without registering it, or if you want to know what the goodwill you have already built is worth, we can review it. We are industrial property agents admitted to practice before the Argentine trademark office.
Herrera & Flamenco Abogados · Córdoba, Argentina