Name of Author: Gustavo J.

Schötz
Joint ownership of trademarks and international injunctions related to
intellectual property rights
An "Italian comedy" with a "French ending"
A review of an Argentine Supreme Court ruling regarding an application for interim relief in the lawsuit
entitled: De Estrada, Martina Maria – Preventive Measures, September 13, 2011.
Affiliation(s) and address(es) of the author: Gustavo Schötz is a full professor at Universidad Austral, and an
Associate Professor in Civil and Commercial Contracts, International Private Law and Intellectual Property.
He is also the Director of the Master in Intellectual Property at the same school.
gschotz@ius.austral.edu.ar
Phone: +54 11 4124-7210

In a trademark joint-ownership lawsuit over the mark "La Martina",

Abstract:
pending at a local court, one of the joint-owners filed an application for a restrictive
injunction intended to be enforced upon the Italian Patent and Trademark Office.
Upon appeal, the Argentine Supreme Court delivered a decision upholding the
jurisdiction of local courts over provisional measures to be enforced in foreign
countries.
The present review intends to answer the following questions:
a) Is it possible in Argentina to apply for and be awarded interim relief intended
to protect trademark rights in a foreign country?, b) Which is the legal framework of
these measures?, c) Does Article 50 of TRIPS support interim injunctions intended to
prevent amendments to a foreign trademark registration? d) What court has
jurisdiction over co-ownership of a trademark pursuant to the Argentine law? e) What
law governs trademark co-ownership? f) What are the rules governing this case, being
a mixed case, which involves Italy?
The Argentine Supreme Court clearly established that ownership issues are
beyond the traditional territorial principle governing IPRs.
Finally, framing provisional measures within Article 50.2 of TRIPS is a relevant
development for the international defense and protection of IPRs. The solution is
consistent with the latest doctrinal solutions, such as CLIP Principles and ALI
Principles
Keywords: Trademark ownership – IPR co-ownership - Provisional measures – TRIPS art. 50 – ALI
Principles – CLIP Principles
1 Introduction
This review of a decision issued by the Argentine Supreme Court (SCA) regarding an application for
provisional measures in the case entitled: De Estrada, Martina Maria –Preventive Measures was prepared also
taking into account the opinion of Public Prosecutor Marta Beiró de Gonçalvez, and the decisions of the lower
court and Court of Appeals (CA) 1.
Although it has been almost a year, this case is new and very enlightening, since it may provide an answer to
the following questions: a) is it possible to obtain, in a trademark lawsuit pending in Argentina, a provisional
measure to be enforced in a foreign country , and, in particular, to obtain a preventive injunction?, b) which
law supports viability of these provisional measures?, c) Does Article 50 of TRIPS support interim measures
intended to prevent amendments to a foreign trademark registration?
In the case under review, a petition was filed before an Argentine court for an injunction ordering the Italian
Patent and Trademark Office (IPTO) not to introduce any changes in certain registration for as long as the
main case remained pending. Due to the global nature of the principles governing international judicial
assistance, any relevant considerations may be helpful in cases involving other jurisdictions. In this case the
issue at stake was the territoriality principle of trademarks -and of intellectual property rights in general-,
under which the substantive and administrative aspects of a trademark registration are governed by the law of
the country of registration.
The disputed subject matter of the original lawsuit was if a joint owner had the right to apply for new foreign
registrations of the same sign in his/her own and exclusive name. This is a substantive issue which is not
resolved peacefully by case-law or by the opinion of legal scholars. There are a number of unanswered
questions like: What court has jurisdiction over a dispute over a jointly owned trademark pursuant to the
Argentine law? What law governs joint ownership of trademarks? What are the rules governing this particular
case that involves both Argentina and Italy?
To complete the analysis, I will also ask myself what would have been the result in the hypothetical case of an
enforcement by the Italian court upon the request for judicial assistance; how would the Italian court have
assessed the Argentine court's jurisdiction to award such provisional measure; what would have been the
procedure followed in Italy and the scope of the provisional measure to be implemented by the assisting court.
A matter that will deserve some attention is the scope given to Article 50 of TRIPS, which in the Court’s
decision was directly applied in a truly novel approach.

2 Facts and background

La Martina marks were originally registered in the name of the plaintiff and her husband, Mr. Adolfo
Cambiaso, the parents of a famous polo player. Later on, both assigned one third of their rights to the
defendant, Mr. Lando Simonetti. Finally, upon separation of the marital property between Ms. Martina de
Estrada and Mr. Adolfo Cambiaso, the former kept two-thirds of the undivided interests and Mr. Simonetti
kept one third2. A few years later, the defendant began to license the trademark without permission from joint

1 The case was No. 12.014/08, De Estrada Martina María – Preventive Measures, Court 6, Clerk’s Office
11. It was appealed before the Second Division of the Civil and Commercial Appellate Court (CA) and
the decision was delivered on November 3, 2009. The opinion of the Public Prosecutor is dated October
25, 2010. What is striking about this sequence of dates is that a provisional measure was sought
because a delay was likely to cause irreparable harm. Finally, as shall be seen below, the petition for
relief was rejected, as the First Division of the Appellate Court, which assumed jurisdiction on July 10,
2012, considered that the factual circumstances allowing for an exception to the territoriality principle
are not clearly evidenced, leaving its analysis for a later legal action. Later on I will state my criticism of
this outcome.
2 Information on these trademark registrations is available at INPI website. (www.inpi.gob.ar). The
marks in question are La Martina and La Martina Polo Ranch covering word and word and design signs
for different classes. The development of the registrations is random, with different interests,
assignments, etc. As can be seen there, the parties implemented the assignment of one third of their
interest by means of a new application in the name of the three of them. This new application, which
follows a previous voluntary agreement, is the origin of the joint ownership.
owner Ms. Martina de Estrada and filed registrations in the name of third parties or new companies in foreign
countries, except for the Italian registration, which remained in the name of Mr. Simonetti3.
The plaintiff sought a generic provisional measure requesting a stay order (Section 230 of the Code of Civil
and Commercial Procedure - CCCP) served at the defendant's address as informed for registration purposes4.
This happened before filing the legal action, as the plaintiff feared to lose her right as a result of actual and
imminent acts by the defendant (registration of exclusive title abroad) that could take place during the
proceedings and before final judgment. In that preliminary proceeding, the plaintiff had to demonstrate that it
had sufficient legal basis to claim (fumus boni iuris) and that there was danger that plaintiff's rights could be
impaired by the lapse of time (periculum in mora). To this end, reports were requested from patent and
trademark offices in Uruguay and Italy, among others. The measure was denied by the Court of First Instance
and by the Second Division of the Appellate Court due to lack of jurisdiction. This was not the case in the
appeal filed before the Argentine Supreme Court, which upheld the jurisdictional claim. However, once
accepted the jurisdiction of the Argentine court to order the provisional measure, the case was remanded to
the Appellate Court, this time to the First Division, which understood that the facts alleged to justify the
departure from the territorial principle were not evident, although the Supreme Court had already ruled in
favor of this aspect. The latter circumstance is what leads me to say that the Italian comedy had a French
ending. It is difficult to understand why after these events the Appellate Court concluded that the periculum
in mora and fumus boni iuris requirements had not been met.

3 Transborder interim injunctions

As mentioned above, in the case under review, the plaintiff requested an interim injunction to be enforced in
Italy pursuant to Section 230 CCCP, which is a typical case of the so-called second-level international judicial
cooperation5.
A first-level request for assistance seeks the performance, in a foreign jurisdiction, of mere procedural steps
such as service of notice, proceedings to collect evidence, notifications or legal opinions about the local law.
Second-level requests, like the one involved in this case, are intended to request and carry out provisional or
preparatory measures, incidental to the main action or to ensure the enforcement of a judgment. Those of the
third level seek the enforcement of a foreign judgment or arbitral award and, therefore, they require a greater
commitment from the requested State, since the latter has to accept and enforce an act granting permanent
rights.

3.1 Jurisdiction of ancillary provisional measures

According to GONZÁLEZ PEREIRA, one of the forms of international judicial assistance which is most complex
and difficult to obtain is the issuance of injunctions by a State foreign to that of the court where the main
action is pending, given the impact on property and persons caused by the enforcement of such an order and
the necessary application of local law in some cases6.

3 This is a long-standing dispute, which has undergone successive stages. As an example, see case
entitled De Estrada, Martina M. v. Simonetti Lando and others, Cámara Nacional de Apelaciones en lo
Civil y Comercial Federal, Sala II (CA) (Division II), 21/09/2006, published in La Ley Online, ref.
AR/JUR/9302/2006.
4 Section 230 CCCP: A stay order may be granted in any kind of action provided that: 1) There is
sufficient legal basis for the claim. 2) There is danger that in case the factual and legal position, where
applicable, is maintained or modified, any change might influence the decision or make its enforcement
ineffective or impossible. 3) A provisional measure cannot be obtained through another preventive
measure.
5There will be international judicial cooperation when the court of a State, during a proceeding taking
place in its jurisdiction, needs to request the assistance of the court of another State, in order to carry
out certain procedural acts that, once completed, will become part of that proceeding. Cfr. DREYZIN DE
KLOR A and SARACHO CORNET T (2005), p. 72
6 GONZÁLEZ PEREIRA (2000), p. 1242
International provisional measures or injunctions are provisional measures that do not have permanent legal
effects7. These measures involve the postponement of the adversarial principle, without becoming separate
proceedings, but ancillary to the main legal action. Hence, the requested judge acts autonomously: he or she
may allow the provisional measure and then reject the judgment of the main action 8. When requested, these
measures are governed by the law of the main trial court, but they are enforced according to the law of the
requested court. It can be said, therefore, that the commitment assumed by that second court is important
because we have an interpenetration of the requesting court’s system into its own system. The court must
exercise its authority and sovereignty in the performance of the assistance requested by the foreign court. It is
certainly a clear demonstration of interjurisdictional cooperation which is much easier when there are bilateral
or multilateral treaties in place providing for this possibility9.
According to the prevailing opinion of legal scholars adopted by international law, jurisdiction and
admissibility of injunctions from foreign countries should be analyzed by each court under its own criterion,
the criterion of the court requesting the measure; and that to be applied for its enforcement and
implementation, which are up to the judge or court of the country of destination10.
As regards the types of international injunctions allowed, they will depend primarily on the provisions of
existing international treaties. The usual classification distinguishes orders involving property, from those
protecting evidence or individuals. Among the former, which are relevant to this case, some will aim to seek
forced enforcement -such as provisional attachment, seizure, temporary restraining order preventing
defendant from encumbering or selling property-, or to maintain a situation or status quo, such as a restraining
order forbidding the defendant from doing something or entering into contracts, filing suits or a mere
surveillance11. In the case under review it was a stay order.
As the Prosecutor put it, what we are discussing here is whether Argentine courts have international
jurisdiction to grant a preventive measure. We must, therefore, clearly distinguish the jurisdiction of the main
action from the competence required to issue a preventive measure, in addition to that necessary to execute

7 According to the Inter-American Convention on Execution of Preventive Measures, adopted by the

Conference of Private International Law convened by the OAS in Montevideo, 1979 (CIDIP II), ratified in
Argentina by Law 22,291, section 1. For the purposes of this Convention, the terms preventive measures
or security measures or guarantee measures are deemed to be equivalent when they are used to mean
procedures or measures whose purpose is to guarantee the findings or effects of a pending or future
proceeding concerning the security of persons, property, or of obligations to give, to do or not do a
specific thing in civil, commercial or labor matters, or in criminal trials in which civil damages are
sought. The States Parties may declare that they are limiting this Convention exclusively to one or more
of the preventive measures provided for in it.
8 CIDIP II on Preventive Measures, Art. 6: The execution of preventive measures by a judge or court of
the State of destination shall not entail any commitment to recognize and execute the foreign judgment
that may have been rendered in the proceeding concerned.
9Italy and Argentina, have not signed a treaty on preventive measures, although there is one treaty on
processing of foreign documents and another on enforcement of judgments.
10The ability to seek preventive measures, in order to guarantee the future outcome of the main action
can be considered a general principle of law. Cf. COLLINS (1992), pp. 23-24. This author cites extensive
case law and international agreements of all legal systems. As an example, we can mention a local
source, such as the Ouro Preto Protocol, or the MERCOSUR Protocol on Preventive Measures,
MERCOSUR/CMC/DEC N° 27/94, which sets forth that: The admissibility of the preventive measure
shall be decided in accordance with the laws and by the judges of the place of the proceedings (Article
5). However, the execution and the counter preventive measure or guaranty shall be determined by the
judges of the place where execution is sought in accordance with its law (Art. 6).
11 Cf. DREYZIN DE KLOR and SARACHO CORNET (2005), p. 164. These measures are also recognized in Anglo-
Saxon systems, under the name of anti-suit injunctions o preliminary measures. Cf. FEUILLADE M (2008),
p. 221
and enforce such preventive measure. It is a logical and indispensable process in which case law and the
opinion of legal scholars are unanimous 12.

3.2 Marginal notes regarding procedural strategy.

It is reasonable to consider that before applying for the injunction, the plaintiff had made certain prospective
assumptions and calculations. An alternative would have been a simultaneous filing of as many actions as
jurisdictions in which the plaintiff had become aware of such infringing registrations. The agents in each
jurisdiction could have warned the plaintiff, so that she could file oppositions to the registration, replevin in
case the registrations had already been granted or proceedings seeking cancellation of the registrations or even
claims for damages. The plaintiff would have had to adapt its defense strategy to the status and venue of each
action. In any case, the plaintiff would have needed to demonstrate in each foreign jurisdiction its better right,
either to its interest in these marks or to the exclusive ownership thereof.
Furthermore, if such proceedings were to be brought in each country, they would be governed by the
particular trademark and procedural laws in each jurisdiction, as required by the territorial or independence
principle (TRIPS Art. 15 et seq). This applies to administrative proceedings as well as to the prior-use
requirement, the treatment given to well-known marks, etc. Trademark joint ownership is also regulated
differently in each country and, therefore, the results would be potentially dissimilar. That is, the plaintiff
would have recovered or exercised its rights in some places and not in others or to different extents. It is quite
easy to be alarmed by this diversity of results, since the products identified by the trademark could be
prevented from entering or being manufactured in one jurisdiction, or their advertising could be banned.
Another possibility would have been to wait for the final judgment in the main action in Argentina and then
request the respective mark assignments, or the correction of registrations, through judgment recognition and
enforcement proceedings in each foreign jurisdiction where the defendant may have registered the mark in his
own name. In this case, perhaps the problem would have worsened, since waiting for each judgment would
have meant more time for the assignment, licensing or lapsing of the marks.
Anyway, the plaintiff would have had to demonstrate in any and all jurisdictions, that as a joint owner it had a
better right, or at least to obtain recognition of the initial implied joint-management agreement of the
undivided interest. Undoubtedly, this would have meant a great number of legal actions, each with its own
requirements of evidence, under different laws and procedures, with the associated costs of translations, legal
fees, documents and expert testimonies, etc. Not to mention the time limits and uncertainties associated with
the effects this would cause on business. In addition, if we consider the different criteria of exhaustion of
rights in force in each jurisdiction the scenario would be still more complex.
An additional problem, raised by the Prosecutor, is the protection of consumer interests, as marks specify the
origin of products, encourage improvement and enhance the goodwill of those who introduce them into the
market, protecting owners from the illegitimate use of their products and their reputation, as is also the aim of
the law to prevent them from becoming merely speculative assets. The issue is not a minor one, since this is
the argument used by some authors to deny the possibility of joint ownership or at least to limit the use of the
same sign indistinctly by different manufacturers, since the assurance of origin and quality provided by the
mark would be lost 13.
If the main justification of an injunction is an imminent danger or a potential irreparable harm, in this case
both had already been demonstrated in the main actions pending at the time of requesting it. The joint owner
(plaintiff) would also suffer losses in the markets in which the minority co-owner is making registrations in
his own name. All these reasons are taken into consideration by TRIPS when allowing these measures,
including a potential denial of justice that could result from a delay in the proceedings14.

12 See for all COLLINS (1992), p. 121 and ss.

13Cf. VÁZQUEZ LÉPINETTE (1996), p. 205, note 428. An interesting precedent is the decision in re S.C.
Johnson & Son Inc. c/Clorox Argentina S.A., CNFedCiv y Com, Division II, 30/4/98, where a preventive
measure was awarded, with the sale of different products with common signs being suspended, based
on Article 50 of the TRIPS, due to the danger of confusion that could affect consumers.
14 Cf. WATAL (2001), pp. 337 and 342.
Without a doubt, the denial of jurisdiction by the lower court and the court of appeals, would have taken the
issue to the phantasmagorical context of fragmentation of trademark rights 15. This aspect is relevant when
requesting an interim relief, as the applicant for the provisional measure must demonstrate that its rights may
be impaired by the lapse of time 16. Then, although the Supreme Court allowed the jurisdiction, it is at least
curious that the First Division of the Appellate Court, before whom the request for the provisional measure
after the appeal was filed, stated that we need to carry out a more comprehensive analysis of the relationships
that bind the parties, whose nature and extent must be clarified in an action once produced the evidence
concerning the cause of action and the documentation attached by each party.
It is clear that there is a main action and that this provisional measure has a different aim: to prevent the
defendant from harming the rights disputed in the main action. And, if the Prosecutor herself acknowledges
that there was enough evidence, what would be the purpose of the provisional measure if its merits had to be
reviewed in a further action?17

3.3 International jurisdiction in Intellectual Property Rights (IPR) and trademarks in particular
International jurisdiction is the power of the authorities of one country to hear and rule over a private law case
which includes foreign elements, as well as the power of foreign authorities to deliver a judgment that can be
recognized and enforced in another State18. While the jurisdiction of the State is established regarding persons
and property located within their territory, it also can be extended to persons or property located in other
territories. Limits will be given by each country’s international commitments with other States or by
customary restrictions19. However, the actual limit will be established by the effectiveness of the exercise of
that jurisdiction20.
As a general rule, it can be said that there is no doubt as regards the jurisdiction of local courts in the case of
an action against a defendant domiciled in the country, or who has accepted local jurisdiction, provided he has
not filed a motion to dismiss for lack of jurisdiction, and that the action has not been challenged for being
pending in another court. One must also verify that there is no exclusive jurisdiction of the foreign court on
the subject matter since in that case the local court would lack jurisdiction. This would occur, for example, if
it were a proceeding concerning real estate located abroad 21.

15 The situation is bad, not only from the point of view of marks and businesses, but also from the
justice required in the PIL. Among the general principles of this discipline uniformity, effectiveness and
justice are often emphasized. A uniform solution requires coordination and cooperation of the different
national authorities, so the fragmentation will be very negative, as it decreases the execution of the
right solution. Thus, the principle of uniformity will mean that the solution of the case must be always
the same, regardless of the country where the judgment had been delivered. Cf. BOGGIANO, 2005, p. 90.
16 Cf. COLLINS (1992), p. 113.
17 In the words of the Prosecutor: It is also added that the lower court gave no consideration to the
alleged existence, between the same parties and in the relevant jurisdiction, of numerous previous
actions as regards the ownership and use of the mark in dispute and the fact that the recipient of the
provisional measure allegedly resides in the country, all these facts having been argued by the
petitioner when filing the appeal (cfse. pages 63/72) and making more evident the omissions in the
analytical activity attributed by the party to the decision of the AC.
18This definition is applicable both to the jurisdiction relating to public law and private law cases, and
in general, to the legislative, administrative, and judicial aspects, and to the validity of judgments
(imperium). Cf. MANN (1984), p. 20
19The origin and the universal validity of this principle can be confirmed by all sources of international
law, as listed in Article 38 of the Statute of the International Court of Justice. Cf. MANN (1984), p. 33
20 PÉREZ VERA et al, 1992, p. 275. A derivation of this principle is the obligation of each country to
recognize and enforce foreign judgments. Cf. FEUILLADE (2008), pp. 31-33
It is worth emphasizing that the case brought in Buenos Aires was not related in the beginning to the
21

mark registered in Italy, but to different cases between the same parties, relating to the unlawful use of
But, in the case under review, although the protective measure is intended to have effects on assets in a
foreign country, the process is legitimate because the defendant resides in Argentina, within the local court’s
jurisdiction and the acts involved were performed within the country, although they may have effects abroad.
Therefore, it can be said that the jurisdiction of the main action is in personam, rather than in rem 22. In the
case under review, a favorable result would have been a notation in the trademark registration record
specifying that the owner should refrain from any activity regarding the mark registration. The mark itself was
not being affected; it was just a temporary inability of its owner to dispose of it. Anyway, beyond this
particular case, it comes to justify the jurisdiction of the local court without invasion of a foreign exclusive
jurisdiction and that there is no abuse of process or exorbitant jurisdiction23. In short, we must establish the
proper relationship of the case with the jurisdiction 24.
Argentine Trademark Law 22,362 (ATML) has few provisions regarding international jurisdiction and
applicable trademark rules. For its part, the Code of Civil and Commercial Procedure does not contain
specific provisions either. There are some provisions in international Treaties, but they do not include
relationships with Italy, like the Montevideo Treaties. In the case of the TRIPS, they do not contain rules on
competent jurisdiction or applicable law. In short, the international trademark system, in particular as regards
trademark ownership conflicts, needs to be integrated. In this sense, the provisions relating to personal
property contained in the Argentine Civil Code (ACC) will not help us, nor the application by analogy of the
rules relating to real estate property25.
The general principle of trademark law is that any conflicts arising between individuals or companies
involving any of the provisions of the Law are subject to the jurisdiction of the local courts, by operation of
the principle of territoriality of trademarks 26. It should be made clear that this principle can be considered
universal by multilateralization, In other words, its application by each State individually produces a unifying
and globalizing effect, as is the case of real estate27. In other words, if each country considers itself sovereign
to establish the law of trademarks granted in their territory and, at the same time, to have jurisdiction over
disputes arising from such trademarks, the so-called conflict of laws and conflict of jurisdictions would be

the mark by the co-owner, or to the granting of licenses without the consent of the co-owner, as
established by Article 9 of the Trademark Law. In general, international jurisdiction over property, and
the traditional distinction between personal property and real property, is not applicable. Cf. FEUILLADE
(2004), p. 208.
22 Cf. COLLINS (1992), pp. 106-108 y 116. In addition, it is possible to justify a preventive measure in
terms of a stay order, when extraterritorial acts or effects that are to be prevented derive from a breach
of contract or a tort adjudged in the defendant's country of residence or before a court to which the
defendant is subject. Idem, pp. 109-111
23 In the exorbitant jurisdiction the element which supports jurisdiction is often merely accidental or
arbitrary. Along with this, it is quite usual to try to benefit one of the parties, precisely the local party, at
the expense of the foreign party. Therefore, the reasons are not based on sovereignty criteria, even
affecting equality or justice. Cf. FERNÁNDEZ ARROYO (2008), pp. 117-152, par. 33.
24 As to the reasonableness of the jurisdiction with the case and the parties, as a limit on state
sovereignty, cf. VISCHER (1992), pp. 9-256, in pp. 203-204 y 211 y ss. Among the opinion of national
legal scholars, cfr. FEUILLADE (2004), pp. 33 and 39 and 62-64.
25Cf. FEUILLADE (2004), pp. 208-213, where although it refers to copyright and patents, its conclusions
are applicable to trademarks.
26 GIAY (2009) par 3.
27 GOLDSCHMIDT‘s remarks regarding real property, under section 10 of the ACC may be useful in the
analysis of the multilateralized unilateral position. I am aware that it is not possible to apply to
intangible goods the rules of real property, but to the effects of explaining the way in which the
exclusive jurisdiction of a State works on the trademarks granted in their territory, the argument is
similar. Cf. GOLDSCHMIDT (2009), Par. 238. In general for the criticism of bilateralization, cf. DREYZIN de
KLOR and SARACHO CORNET (2005), p. 85. In order to avoid any conflict, the rules of each country should
be perfectly identical.
solved. If the trademarks registered in Argentina may only be enforced in Argentina those registered in
Uruguay will only be enforced in Uruguay, and those registered in Italy will only be enforced in Italy and so
on, it does not seem likely that cross-border disputes might occur28.
But this is only relatively true, since it is worth considering which specific issues relating to trademarks or,
more precisely, which legal relationships involving a trademark are governed by the territoriality principle.

3.4 Limits to the territoriality principle

The so-called territoriality principle has two aspects. On the one hand, the local authorities limit the granting
of rights in their territory through the implementation of the applicable economic policies in the regulated
market. Then, the territorial principle identifies the acts relating to trademarks in such a way that, to each act,
a certain law applies29. From this point of view, the territoriality principle determines a jurisdiction for
granting registrations, as well as for hearing any legal actions related to acts performed in or affecting a
specific country and therefore subject to its legal system30.
In this regard and, in relation to the case under study, we must determine the territoriality of the trademarks
originating the rights of the co-owners disputed in the main case, and, in particular, the right that each of them
may have to a new registration or exclusive use abroad. The respective interests and the relationship among
potential co-owners, as we will see, may originate in a contract, inheritance, marriage, company or
employment31. Hence, in each particular case, before applying the territorial principle indiscriminately in any
of its manifestations, we must delve into the reality of the legal relationship of the parties involved, since an

28 In the European Union, this principle has been laid down in Council Regulation (EC) No 44/2001 of
December 22, 2000 on jurisdiction and the recognition and enforcement of judgments in civil and
commercial matters (Regulation 44/2001 on Jurisdiction), Art. 22: The following courts shall have
exclusive jurisdiction, regardless of domicile: (Art. 4) in proceedings concerned with the registration or
validity of patents, trademarks, designs, or other similar rights required to be deposited or registered,
the courts of the Member State in which the deposit or registration has been applied for, has taken
place or is under the terms of a Community instrument or an international convention deemed to have
taken place. Similar terms are included in other rules, such as the Spanish Civil Code: Article 10.4
"Intellectual property rights will be protected within the Spanish territory under Spanish law, without
prejudice to the provisions of international conventions and treaties to which Spain is a party.
29 Cf. CABANELLAS DE LAS CUEVAS (2011), p. 740
30 For limitations to the principle of territoriality of intellectual property rights, in general see
Intellectual Property: Principles Governing Jurisdiction, Choice of Law, and Judgments in Transnational
Disputes, THE AMERICAN LAW INSTITUTE, Proposed Final Draft, March 30, 2007, (ALI Principles). In this
document, the term territoriality is limited to certain aspects: § 301. Territoriality. (1) Except as
provided in §§ 302 and 321-323, the law applicable to determine the existence, validity, duration,
attributes, and infringement of intellectual property rights and the remedies for their infringement is:
(a) for registered rights, the law of each State of registration. It also refers to the limitation of the
principle of territoriality, CLIP, EUROPEAN MAX-PLANCK GROUP FOR CONFLICT OF LAWS IN INTELLECTUAL
PROPERTY, Exclusive Jurisdiction and Cross Border IP (Patent) Infringement Suggestions for
Amendment of the Brussels I Regulation, 20.12.2006, available at http://www.cl-
ip.eu/en/pub/home.cfm
31IPRs are known in foreign literature as a problem of ownership, or, more precisely, of the Entitlement
to the grant and ownership of Intellectual Property Rights, and this gives rise to its own jurisdiction or
applicable law solutions. Cf. FAWCETT and TORREMANS (1998), p. 49 y ss. The problems of ownership are
also analyzed by CHESTEK (2006), pp. 681-723. Under the ALI Principles, it was established: § 311. (2)
When there is a contractual or other preexisting relationship among the parties, the law applicable to
that contract or relationship will govern initial title. The explanation is in p. 222.
infringement, a breach of contract, a contract creating a business association, an employment relationship or a
family relationship, etc., are not the same thing 32.
According to the Prosecutor, there are relevant aspects of the case that cannot be constrained within the limits
of the territorial principle. In particular, when discussing the alleged bad faith of the minority co-owner or
whether his conduct is contrary to morality and good practices (Sections 953 and 1071 of the ACC), or
whether a registration should be denied because it is contrary to public order (Article 6 quinquies. b. 3 of the
Paris Convention)33.
As stated by Gustavo GIAY, The ATL identifies six different types of actions: cease opposition (Section 17),
cease-and-desist use, of both trade mark and trade name (Sections 4 and 29, respectively), trademark lapsing
(Section 26), trademark invalidity (Section 25), denial of registration (Section 21) and reinstatement or
assignment proceedings (Section 11). In addition, provisional measures are provided by the Law (Section 38),
the TRIPS Agreement (Article 50), and the Code of Procedure (Section 195 et seq)”34.
Among the above rules, the most relevant to this case is Section 11 of the ATL which provides that
jurisdiction of any legal actions related to trademark invalidity, claim or lapsing will be determined by the
local address for service established in the records. Although actions relating to the joint ownership of a
trademark are not specifically mentioned it does not seem necessary to make an exception to the territoriality
principle, which establishes jurisdiction according to the place of registration.
However, the matter is not so simple. This is what legal scholars refer to as a problem of definition since we
need to define the kind of issue we are facing in order to apply the appropriate legal system35. Certainly, for
the first registration in Argentina, the Argentine court shall have jurisdiction. But in this case under discussion
-although within the restricted and temporary framework of a provisional measure-, jurisdiction is also
affected by a claim involving joint ownership of a second registration in a foreign country.
As mentioned above, the territorial principle has been adopted, among other legal systems, by Regulation
44/2001 of the European Union on jurisdiction. This rule establishes the exclusive jurisdiction of the courts of
the place of registration for all matters concerning the registration or validity of trademarks. The expression
for all matters concerned with registration or validity… was unclear and needed to be construed by the
courts36. In all the cases involved it was decided to give this expression a restrictive interpretation, since it is

32 Cf. CABANELLAS (2011), p. 747, where although it relates to patents, the conclusions are applicable to
trademarks.
33 This last argument is very interesting because the Prosecutor would suggest that certain rules
enshrine principles of universal or extraterritorial validity as an international public order; but not as
an obstacle to invalidate foreign law contrary to that public order, but as a support for a required
jurisdiction, because there is a higher interest for state powers to prevent the consolidation of unfair
situations. It seems this is the way she understands the above-mentioned provision of the Paris
Convention: “Trademarks [...] may be neither denied registration nor invalidated except in the
following cases, 3. when they are contrary to morality or public order and, in particular, of such a
nature as to deceive the public”. At least, I can see that in this case there is a forum conveniens situation.
34GIAY (2009) par. 2.
35 The points to clarify here are whether this is a problem related to a tort, a registration, a contract, etc.
which law will be applied? The law of the place where the delict [tort] was committed (lex loci delicti),
the law of the place where the protection is claimed (lex loci protectionis), the law where the property is
situated (lex rei sitae), the law of the place of registration (lex registralis), or the law of the place where
the contract is made (lex contractus)? Cf. BOGGIANO (2005), p. 411. In the absence of a self-sufficient
definition, the issues of definitions in the rules of jurisdiction are solved by the private law of the judge
hearing the case (lex civilis fori). Cf. SOTO (2009), p. 84.
36 The decision which provided an answer to these questions was delivered by the TJCE Court (Fourth
Division) on November 15, 1983, in re 288/82, Ferdinand M.J.J. Duijnstee vs. Lodewijk Goderbauer. The
issue was whether the rights of an employer on an unlawfully registered patent in the name of an
employee, for an invention made during the course of an employment relationship, should be litigated
in each jurisdiction in which it had been granted, or before the courts of the common domicile of the
an exception to the general jurisdiction of the Regulation: the defendant's domicile, free will, the place where
the harmful event occurred. It is thus understood that the actions related to registration deal with the legality
of a registration or to the existence of a deposit, with a priority right, of a claim for denial of registration for
lack of inventive step (in patents) or the proceedings seeking cancellation of a trademark registration37. This is
a case where the tasks and functions of the Patent and Trademark office come into play. Thus, another
jurisdictional activity of the office would be to determine the validity of a patent or to verify its unity of an
invention, etc.38
In a negative approach, infringements would not be covered by the exclusive jurisdiction of the registration,
since complaints must be filed in the place where protection is sought. Neither are the aspects related to the
transfer of a right by means of a contract, even if the registration of the transfer in the registry is required
afterwards. In a dispute related to the validity of an assignment, the administrative authorities do not play a
jurisdictional role and are only limited to recording the transfer 39.
In short, those issues that do not directly refer to the validity of the registration or the right itself are not
included in the exclusive jurisdiction of IPR registration. It would be the case of ownership, for instance,
arising from circumstances other than a first registration, which would be outside the exclusive jurisdiction
marked by the territoriality principle.

3.5 What is the international jurisdiction over a case dealing with joint ownership of a trademark?
As I have already said, competent jurisdiction over joint ownership is part of a broader issue, as is ownership
itself, not subject, in principle, to territorial limitations, except for the first registration. Joint ownership of a
trademark means that the mark is owned by two or more persons, each having an undivided interest therein.
In Argentina, this is governed by Section 9 ATL and to the extent not provided for in it by Sections 2673-
2755 of the ACC. This is a particular form of joint ownership, co-ownership or joint proprietorship of a
trademark40. Each jurisdiction establishes its own rules regarding the possibility of registering jointly-owned
trademarks and the applicable modes, effects, administration systems, acts permitted to each party, full or
partial transferability of ownership, etc.
According to MARTÍNEZ MEDRANO and SOUCASSE and Section 2675 of the Civil Code, the acquisition of
joint ownership of a trademark may be original or derived by contract, inheritance or according to law (ex
lege)41. In the case under review, it seems that the parties expressed their will to share ownership of the

employer and the employee, where the first registration had been made and whose priority was
claimed. It was decided that the applicable jurisdiction was that of residence and of the employment
relationship and the later matching jurisdiction of the company’s bankruptcy. On the contrary, the
jurisdiction of each patent registration was not the competent jurisdiction, even if subsequently each
registration would have to be modified. Such exclusive jurisdiction did not conflict with the exclusive
jurisdiction for the registration of each application. A more recent case in which exclusive jurisdiction
was ratified was re C616/10 TJCE, Solvay SA c. Honeywell of July 12, 2012.
37 Cf. FAWCETT and TORREMANS (1998), pp. 18 and 19.
38 Ibidem.
39 Idem, pp. 19 y 20. These authors also cite an English case in which British researchers assigned their
patent rights to a Swedish company. They also claimed to be mentioned as inventors. The validity of the
agreement should be decided in Sweden, although this court should apply English law to decide on the
capacity as inventors of the British researchers. Cf. Case Kakkar and Others v. Szelke and Others, Court
of Appeal 1989, 1 FSR 225, cited by FAWCETT and TORREMANS (1998), p. 53.
40MARTÍNEZ MEDRANO and SOUCASSE (2002), pp. 1094-1101. Also MITELMAN and ZUCCHERINO (2006), p.
218. The subsidiary application of joint ownership is allowed in other legal systems. Cf. LOBATO GARCÍA-
MIJÁN (1993), pp. 787-809
41MARTÍNEZ MEDRANO and SOUCASSE (2002) p. 1095. In the same sense, BERTONE and CABANELLAS DE LAS
CUEVAS (2003), Vol.2. p. 126. Also VÁZQUEZ LÉPINETTE, who adds the possibility that a derived
trademark, in a certain proportion, each party owning an undivided interest. This is stated in the application
for registration filed with the trademark authority or in the assignment agreement giving rise to a joint
ownership. Each joint owner is not, therefore, the owner of the trademark, but of an undivided interest
thereon, as previously agreed.
The initial joint registration or the assignment agreement of an undivided interest implies a meeting of the
minds between the parties, at least in terms of the distribution of the joint ownership 42. In the case under
review the parties were not clear in determining how to manage the jointly owned asset, or what would be the
way to resolve any disputes that might arise. This lack of specific provisions is evident in the complaint and
its answer, and made it necessary to resort to court to solve it.
However, the fact that no provisions were made in the partial assignment agreement, does not make it invalid.
On the contrary, such lack implies that it is necessary to apply instead the joint ownership legal rules, where
compatible43.
In short, what is at issue here is if a voluntary act creating a joint ownership and conferring the parties certain
prerogatives expands its effects regarding joint or several capacities, to the performance of certain activities,
as is the case of a new registration of the same distinctive sign. In my opinion, the originating act and its
effects should not be discussed in all jurisdictions where the same parties intend to file a registration. It should
be resolved once and for all and then the solution should expand to subsequent or derived registrations.
In this way, if the new registration is found to be contrary to the interests of one of the joint owners or of the
consumer public, as provided in Art. 5.C.3 of the Paris Convention, it should not be necessary to discuss the
question again in each territory, because the decision would be enforceable in all subsequent jurisdictions44.
This is a factual situation which does not require duplication of proceedings or evidence. Therefore, a
distinction can be made between the jurisdiction relating to a registration, -which will be exclusive-, and the
jurisdiction relevant to entitlement and ownership. The difference is clear45. In the decision under review,

constitution can be made by the meeting of the minds, where an owner transfers a part thereof, thus
constituting a joint ownership with the assignee. Also, citing the opinion of German legal scholars, when
an employer invites others to make use of the same sign and it assigns them an interest in the
ownership. In any case, joint ownership must be distinguished from the company. In the first case, the
personal assets of the joint owners includes the undivided portion of the trademark, while in the
company, the trademark belongs to a separate property of the partners' net assets. Cf. VÁZQUEZ
LÉPINETTE (1996), pp. 59 and ss and 204 and ss.
42The agreement by which the parties initially file a joint registration of a trademark is often called
agreement for the creation of joint ownership of a trademark. Cf. LOBATO GARCÍA-MIJÁN (1993), p. 797.
The second assumption, the partial assignment of an interest, is made effective by means of an
assignment of rights agreement.
43In the absence of an agreement, it will be necessary to replace the undeclared will with assumptions
or with the joint ownership system. Cf. CHESTEK (2006), p. 692
44Article 5.c.3 of the Paris Convention provides that: Concurrent use of the same mark on identical or
similar goods by industrial or commercial establishments considered as co-proprietors of the mark
according to the provisions of the domestic law of the country where protection is claimed shall not
prevent registration or diminish in any way the protection granted to the said mark in any country of
the Union, provided that such use does not result in misleading the public and is not contrary to the
public interest.
45Thus, for example CLIP Principles. Article 2:205: Entitlement and ownership. As regards entitlement
to and ownership of an intellectual property right, the State where the right exists or for which an
application is pending shall also have jurisdiction. From this it follows that the Argentinean courts
would be competent for a case which discusses ownership of a registration of a jointly owned
trademark. This jurisdiction is added to the traditional jurisdiction over the defendant's domicile or
common domicile of the parties. On the other hand, jurisdiction over the registration is treated
differently. Article 2:401: Registration and invalidity. (1) In disputes having as their object a judgment
on the grant, registration, validity, abandonment or revocation of a patent, a mark, an industrial design
there was a joint ownership resulting from an agreement for the partial assignment or transfer of the
trademark pursuant to Article 6 of the ATL46.

3.6 Characterization of the cause of action affects the jurisdiction rule

As we can see, it is very important to properly define the cause of action involved. If it were a trademark
infringement or a fraud case, the applicable law and jurisdiction would not be that of Argentina. This was
understood by both the Lower Court and the Appellate Court. The same conclusion would have been reached
if the discussion had been related to registration: the Italian courts would have had an exclusive jurisdiction.
But as a complaint by one joint owner against another is a personal action, jurisdiction is established
according to the place of residence of the parties, at least as a concurrent jurisdiction. The Italian courts would
not either have an exclusive jurisdiction if the dispute is about an agreement establishing how to manage the
jointly owned asset47. In the latter case, the jurisdiction would be that of the place of performance, or a
jurisdiction agreed by the parties, if the parties had agreed a change of venue. Therefore, it would be
necessary to analyze the contract or agreement giving rise to the joint ownership, its effects and scope.
If joint ownership of the trademark is acquired through an assignment agreement, the assignment document
constitutes the title and establishes the conditions of joint ownership of the assigned asset. Registration of the
assignment document provides the required publication and supports enforceability against infringers48. The
arrangement, in terms of percent interests shown in the application, is presumed to be voluntary. Its effects,
including extraterritorial effects, will depend on the specific provisions agreed by the parties or established in
the applicable subsidiary system. In short, the agreement sets forth the way in which the joint owners will
manage and dispose of the licenses, defenses and new registrations or amendments.
Thus, as in real estate, territorial jurisdiction and local law are of exclusive application (Section 10 of the
Civil Code) over real property assets. However, contracts giving rise to rights in rem in Argentina may be
tried before foreign courts and governed by foreign laws. An action seeking enforcement of an agreement
would be a personal action49. In my opinion, it does not matter, for jurisdictional purposes, if it is a tacit
agreement or if the agreement has been formally entered into. In any case, it is a matter of interpretation of the
common intent of the parties and of the effects of the provisions and omissions of the legal system giving rise
to co-ownership.

or any other intellectual property right protected on the basis of registration, the courts in the State
where the right has been registered or is deemed to have been registered under the terms of an
international Convention shall have exclusive jurisdiction. Then, once the principal jurisdiction has
been justified, it is possible to establish the relevant provisional measure: Article 2:501: Provisional,
including protective measures. (1) A court having jurisdiction in accordance with Articles 2:102 to
2:401 also has jurisdiction to order any provisional, including protective, measures. The so-called CLIP
Principles were developed by a group of scholars in the fields of Intellectual Property and Private
International Law from the Max Planck Institut. Cf. http://www.cl-ip.eu/en/pub/home.cfm
46ATL, Art. 6: The transfer of the registered trademark is valid as regards third parties, once registered
with the National Industrial Property Office". The rule does not refer to partial assignments, but the
opinion of legal scholars is unanimous in that it is necessary to apply the general contracts rules,
specifically Section 1434 et seq. of the ACC. Cf. SÁNCHEZ HERRERO, 2006, pp. 1273-1441, in comment to
Section 6.
47Hence it is advisable to enter an arrangement for the management and disposition of a common good.
Cf. BERTONE and CABANELLAS (2003), Vol. 2, p. 126. This same recommendation was made by the
International Association for the Protection of Intellectual Property (AIPPI): 2) Co-owners should be
free to organize their co-ownership arrangements. In the absence of such arrangements national law
regulating co-ownership of IP rights should apply. AIPPI, Resolution Question Q194, The Impact of Co-
Ownership of Intellectual Property Rights on their Exploitation, available at
http://www.aippi.es/pdf/resoluciones-congresos/resolucion-congreso-q194.pdf
48 Cf. SÁNCHEZ HERRERO, 2006, in comment to Section 6.
49 Cf. GOLDSCHMIDT, 2009, Par. 238.
3.7 Incidental question to the jurisdiction rule
Determination of the common intent of the parties regarding the effects of the original act, i.e. of the first
registration of the trademark or a partial assignment agreement giving rise to joint ownership, or a judgment if
there is no agreement, will raise an incidental question at the time of each subsequent trademark registration 50.
Hence, a single jurisdiction must be determined and, according to the solution reached, each registration
should be filed or amended in each and all relevant national offices51.
The structure of the jurisdiction rule to be developed will have, like all, a factual background and a legal
consequence. The factual background is an international cause of action in a conflict involving a jointly
owned trademark. The consequence is the determination of the competent court. SOTO, in an abstract and
general way, states it as follows 52:

will have jurisdiction,

If it is an international cause of
action (private law case with foreign
elements), brought before a court with the Court first hearing or,
international jurisdiction (facts the case
underlying the jurisdictional contact),
having incidental questions and will lack jurisdiction
definitions been decided,

Although it may seem strange, there are also issues of 'incidental questions' regarding jurisdictional aspects.
Generally speaking, this concept is only used when designation of the court depends on the choice of law
(doctrine of parallelism) or when trying to verify the validity of a change of venue clause. But some elements
of the cause of action conforming the factual basis of the jurisdiction rule may not be clear and, therefore,
may require a decision on an issue prior to designation of the court. In the case under review, this occurs in
two stages: first, when the Argentinean court raises the question whether it has jurisdiction to order the
provisional measure; in the second place, -or prospectively, by the Italian court, which should analyze the
jurisdiction of the Argentine court before enforcing any measure53.
An incidental question is raised when an issue is related to another in such a way that the solution of the latter
naturally conditions the former54. As regards jurisdictional aspects, the problem may be related to substantive
and procedural elements and must be resolved when answering incidental questions or through incidental
motions. The incidental question referred to the provisional measure will not be identical to one that could be
filed in declaratory proceedings. In the first case, it is only important to know that there is a case pending
dealing with a situation that will be relevant for the subsequent determination of the rights of the parties. An
action seeking a judgment on the merits, hypothetically brought in Italy, would require a judgment deciding
on the joint ownership of the first registration and its subsequent effects.
This single jurisdiction, in my opinion, will be either that of the defendant's residence or the place of
performance of the contract giving rise or regulating the jointly owned asset, or the place of the first
registration. In the case under review, they are the same because the jurisdiction of the place where the main
complaint was brought matches that of the address for service established for registration (Section 11 of the

50 Cf. CHESTEK, 2006, p. 703.

51Cf. DINWOODIE et al, 2008, p. 1060, which address the issue under the title “The dispute in the main
proceedings and the question referred for a preliminary ruling”, and discuss in the context of patents
the scope of Article 16.4 of Regulation 44/2001.
52 SOTO, 2009, p. 66. Also, FEUILLADE, 2008, pp. 117-119.
53There would be a third stage to analyze the incidental question in any future or contemporary
proceeding referred to the Italian application, either as a claim, amendment, cancellation, etc.
54 Cf. BOGGIANO, 2005, p. 421. SOTO, 2009, p. 89.
Trademark Law) and the place of performance of the assignment agreement that led to joint ownership. This
is, therefore, the jurisdiction of the main action which could not be declared exorbitant or invalid by any
foreign court.
Hence, the judgment to be delivered would be enforceable -or considered as a precedent- in any lawsuit where
the same parties may have a dispute over any registration of the distinguishing mark55. In the proceedings that
should take place to rectify registrations, request their revocation or replevin, the Argentinean judgment
regarding joint ownership and the acts permitted or prohibited to joint owners, or their good or bad faith, must
be produced as proof presented and accepted but not verified. This distinction is essential because
administrative or judicial authorities in each country retain their authority over registration, but always taking
into account the relevant rights, title and ownership claimed in other jurisdictions.

3.8 The relationship between jurisdiction and applicable law

An additional way to verify the jurisdiction that I am advocating is to make an analog application of the
Montevideo Treaties of Civil International Law of 1889 and 1940, which establish the forum causae [an old
ground of jurisdiction, according to which a state has jurisdiction whenever its law applies] or the doctrine of
parallelism56. This is justified under the silent of the law which I have already mentioned, making it necessary
to resort to integration (Section 16 ACC). In the 1940's version, Section 56 establishes: Personal actions must
be brought before the courts of the place to whose law is subject the legal act the subject matter of the lawsuit.
In this case, the legal act is the contract or its performance, or its supplemental system, or tort or breach of
contract giving rise to the lawsuit; all subject to the Argentinean law and, therefore, under its jurisdiction.
This same Section 56 sets forth that: actions may also be brought before the courts of the defendant's
domicile, originating thus two concurrent jurisdictions.
This section is supplemented by Article 43 of the Treaty of Montevideo: The obligations arising without an
agreement are governed by the law of the place where the lawful or unlawful act occurs and from which these
obligations arise from and, where appropriate, by the law governing their legal relations. In this sense, a
trademark registration infringing a joint ownership or licensing without the approval of the joint owner may
be a wrongful act and shall be governed by the law of the same legal relationship: the joint ownership of a
trademark.
The relationship between the law and its jurisdiction (forum et ius) is based on the old principle by which
courts would have jurisdiction in cases where they could apply their own law, both due to the effectiveness
and as regards other state autonomies 57. Another reason can be found in Private International Law (Conflict of
Laws) which tends to the realization of justice as its substantial mission through two stages: the certainty of
the applicable law and the disincentive to forum shopping.

55 This was submitted in re Harrods Limited c/Harrod's Buenos Aires Limited s/Cese de oposición al
registro de marca. There the plaintiff presented a foreign judgment before the court to discuss its value.
It was a judgment delivered by British courts in a proceeding directed to another subject matter, and
the effectiveness of the judgment was asserted as defense and evidence, not as res judicata. It was said
there that there can be no question of a binding effect of material res judicata of the foreign judgment
but merely of evidentiary effect. CNCiv y ComFed, Division I, 04/10/2007, Case 10378/2000. The
judgment in question was rendered by a Court of Appeal from the United Kingdom on May 21, 1998,
which established the right of Harrods Sudamérica to the exclusive trademark registrations in the
continent. The distinction between the evidentiary effect of a foreign judgment or the enforcement of
the same judgment, can be seen in FEUILLADE, 2008, p. 74.
56 Cf. FEUILLADE, 2004, p. 213.
57 However, it seems that this criterium is in decline. Cf. FERNÁNDEZ ARROYO, Aspectos esenciales de la
competencia judicial internacional, No. 32. JAYME sees it from a dual perspective It may be considered,
on the one hand, that a court will apply its own law. Then, the court will have jurisdiction if it is
appropriate to apply its law, and not otherwise. If the latter aspect were absolute, it could lead to a
denial of justice. It seems reasonable if there were public order rules, or the judgment is on property
located in the territory, which are governed by the state law of their location. Cf. JAYME, 1995, p. 135.
The parallelism criterion states that the courts which would have jurisdiction would be the courts of the
country whose law is applicable. That is, if the Argentinean law were applied to judge a case of infringement
of the rules of a joint ownership established in Argentina -as would be the case of a foreign registration under
the exclusive name of one of the joint owners- the Argentinean courts will have jurisdiction. Of course, this
jurisdiction will not be exclusive to prevent denial of extraterritoriality of the foreign law: the connection
between law and jurisdiction does not imply identity58. But once the jurisdiction of the main action has been
ensured, the first step has been taken in order to determine with certainty the jurisdiction for the issuance of
the provisional measure.
In short, the jurisdiction of the main action will be the jurisdiction which is to determine the legal relationship
at issue. As this is about the obligations arising from a common intent that gave rise to a joint ownership
trademark registration and to the subsequent acts carried out by the parties, jurisdiction does not refer to the
registration itself, without being applicable therefore the principle of territoriality. We are talking here of the
jurisdiction of the originating agreement or of the contract governing the administration of the common good
-or its supplemental system-, or the jurisdiction of tort or contract59.

4 Difficulties posed by trademark co-ownership

International jurisdiction in joint trademark matters has not been provided for in virtually any legislation.
Hence the uncertainty creates significant drawbacks60. Given this statutory silence, judges should first apply
domestic rules together with the general principles derived from both the procedural system and the
substantive rules or international legal systems.

4.1 Joint ownership in Argentinean Trademark Law

As already explained, the parties’ silence regarding management of the undivided title when executing a
partial trademark assignment agreement, has the effect of subjecting the parties to the supplemental system of
co-ownership without any reservations. Joint-owners under the Argentinean Civil Code, have broad powers to
dispose of their undivided interest, but have great limitations with respect to the sale or encumbrance of the
commonly-owned asset61. Without the express or implicit consent of the other co-owners there are very few
possibilities of disposing of it individually62.
The situation is similar in comparative law. Some authors distinguish acts involving a material alteration of
the common intangible asset from those involving legal acts, such as to grant a security on the commonly-
owned asset. Among the changes considered material, and thus very useful for our case, is the creation of a

58 Cf. WOLFF, 1958, pp. 57-58.

59 I must say that the case we are discussing is not the case provided for in Article. 6 septies of the Paris
Convention, Marks: Registration in the name of the agent or representative of the proprietor without
the latter's authorization. The co-owner is not an agent or representative of the other joint owners. The
contract that binds them to manage the common good, whether express or implied, is not a
distribution, agency or representation agreement. This was understood by case law in re Café del Mar,
Audiencia Provincial de Alicante, Sección Octava, Tribunal de Marca Comunitaria, Rollo de Sala No. 813
(c-38) 11, Decision No. 198/12 of April 27, 2012. Obviously this is a dispute between co-owners, and
the defendant's action is not in the context of a corporate court, based on grounds of undue use of some
powers, but in the context of a relationship of co-ownership.
60 This matter has not been foreseen in the TRIPS either. Cf. DREYFUSS et GINSBURG (2002), p 1094.
61For the application of this criterion to the trademarks, Cf Camuyrano, Cecilia Ida c. La Orquídea Shop
Argentina S.A., CNCiv y ComFed, Division II, 19/9/2010, which ratified the ability of a co-owner to use
or exploit independently the mark, as well as to dispose of their undivided interest. The same was
decided in re Crescenti, Ernesto José Vicente c/ Instituto de Medicina Integral Juan Hirschmann S.A. s/
cese de uso de marca, CNCiv y ComFed, Sala III, 26/2/2002.
62Cf. PAPAÑO (2004), p. 169. Also LLAMBÍAS and ALTERINI (1993), comment to Art. 2681, p. 511. I think
that a new registration is a material innovation in the terms of the ACC.
derived mark63. Other authors, however, consider that, in the absence of an agreement, the independent use by
a single owner should not be allowed, due to the harmful effects that this causes on the mark and on the public
trust. In addition, goods produced by only one owner without the authorization of the others would be an
infringement allowing the rest of the co-owners to prevent their introduction into the market 64.
As a derivation of this principle, we can say that the general rule is to require all joint owners to take part in
acts involving the exercise of joint ownership while individual performance is allowed for management or
conservation thereof. The same situation occurs with trademark joint ownership, since Section 9 of ATL
requires joint performance of licensing, transferring or renewing any jointly-owned mark, but the will of only
one owner is enough to file an opposition against a third party or to exercise any defensive action.
Thus, use of a jointly owned trademark, is allowed to each owner individually65. However, the law is clear in
that renewal or disposal of a mark are not a use because they require agreement of all the co-owners;
therefore, a new registration appears to be closer to the group of acts of ownership and, therefore, cannot be
assumed by only one co-owner without the agreement of the others66. We say act of ownership, without
making a distinction between acts of disposal or acts of administration, because the rule on joint ownership of
the ACC prohibits or authorizes certain acts to the co-owners, as well as does the ATL, without being some of
them classified as acts of disposal or administration67. Thus, in general, renewal a trademark could be
considered an act of administration, but the Law establishes that any renewal must be filed by all co-owners68.
Therefore, the text of Section 2680 ACC is mandatory: None of the co-owners can, without the consent of all
of the others, exercise over the commonly-held asset, or even as to the smallest part thereof, physically
determined, any material or legal acts which import the actual and immediate exercise of the right of
ownership.

4.2 Gap in the general system of joint ownership

In the same sense, it could be understood that a new registration in a foreign country held by only one of the
co-owners, with the possibility of preventing manufacturing or importation by any of the other co-owners, is
contrary to Section 2682 ACC, which provides that a co-owner can neither alienate, nor create easements or
mortgages to the prejudice of the right of the co-owners69. A separate registration, covering the same
products, and thus, preventing the full use of the mark to the other co-owners would be to their detriment.
The situation would be even worse if the mark was considered well-known or renowned, since it would add a
special feature to the sign, for the benefit of all co-owners, as it would be preferred over others in new
registrations and even opposing third party registrations. This attribute corresponds to the well-known
trademark as a whole, as a unit, and is not likely to be appropriated by only one of the owners, who is only the

63 Cf. VÁZQUEZ LEPINÉTTE (1996), p. 359.

64 Cf. LOBATO GARCÍA-MIJÁN (1993), pp. 800-802.
65Cf. La Salteña S.A. c. ALIJOR S.A. s/Cese de Oposición al registro de marca, CNCiv y ComFed, Sala 2,
7/9/2010. In this case the parties had agreed to consider within the definition of authorized use any
change of typography, logos or isotypes related to the products marketed by each party.
66 This is expressly understood by ORTUÑO BAEZA (2006), pp. 5-16. In this paper she discusses the
judgment of the Third Division of the Contentious-Administrative Supreme Court delivered on
November 17, 2004 (STS 7418/2004), on refusal of registration of a trade name. A co-owner intended
to apply for the registration of a trade name in its own name, to which the other co-owner opposed. The
Supreme Court decided that the filing of a new registration requires the consent of the other co-owner,
because although each co-owner may use individually the trade name, they must do so in a way that is
consistent with the destination of the thing and that it does not harm the interests of the joint
ownership. So, if that registration prevents the use of the same name by the joint ownership or one of
its co-owners, or creates confusion to consumers, the registration cannot be granted.
67 Cf. PAPAÑO (2004), p. 178 y ss.
68 BERTONE and CABANELLAS (2003), Vol. 2, p. 127.
69 Cf. MARTINEZ MEDRANO and SOUCASSE (2002), p. 1100.
owner of an undivided interest or ideal part. Clearly a new registration involves the joint title and not the
undivided interest. Thus, in this case, the priority right for registration due to a prior use would also belong to
all the co-owners together and not to one of them individually.
Making use of an analogy, if rental of real property requires the consent of all co-owners (Section 2703 ACC)
and the same happens when granting a license of a jointly-owned trademark (ATL, Section 9), by even greater
force of logic it will be necessary to apply for a new registration in the name of only one of them, due to the
potential harm this may exert on the sign of which they are co-owners70. And, conversely, a single co-owner
may not be the only beneficiary of the effort of the others, i.e., of all the co-owners71.
Another useful argument to frame the issue is to consider a new registration as an accessory of the principal or
a new property acquired by accession. The analogy is that the trademark owner (the co-owners) may be
entitled to new registrations, which may be for different classes from the original one, but related to their
activity or to registrations in foreign countries to which they can access by prior use, awareness of the sign,
etc. If what the trademark owner has access to is a trademark which belongs to all the co-owners, and not to
only one of them, it seems unlikely that only one can benefit to the detriment of the others. Accession is
provided for real or personal property (Section 2571 et seq. ACC), and also for rights (Section 1458 ACC). If
the co-owners are entitled to oppose registration by third parties of the same sign in new classes or in new
jurisdictions or enforce any claim, etc, they may also, and by even greater force of logic, be entitled to such
opposition concerning a co-owner acting outside the joint ownership 72.
It seems that due to the risks involved in the use of a mark by a co-owner without the consent of the other co-
owners, a restrictive interpretation must be applied73. The case attracted the attention of AIPPI (International
Association for the Protection of Intellectual Property), in ExCo Singapore 2007. It was resolved that legal
rules applicable to co-ownership of material goods should only be regarded as a secondary legal authority
when applicable to the co-ownership of IP rights. Regarding use, specifically: In the case of trademarks, each
co-owner is not individually entitled to use the mark, unless agreed otherwise. And in relation to third parties,
specifically the possibility of allowing them the use of the sign by a license, it was decided that: Individual
co-owners wishing to grant licenses on a registered or protected trademark, or a copyrighted work to third
parties should require consent from the other co-owners74.

4.3 New registrations as seen within the framework of the general system of joint ownership
A new registration of a jointly-owned sign, either in another class or in another jurisdiction, deserves more
attention than it has received so far. Strictly speaking, a new registration may be considered a different and
independent mark, unrelated to the previous co-ownership. But if we look at the normal course of events and
the operation of businesses, the so-called brand extension is very common, where a businessman, initially
involved in a specific business, expands its business to new industries, linked to its main business activity, but

70Thus, BERTONE and CABANELLAS suggest that it is possible to apply the analogy of rentals to the license
of a mark, which requires the unanimity of the co-owners. Cf. BERTONE and CABANELLAS (2003), Vol. 2, p.
128.
71I think the solution would be different if the registration is for a class of products or services that will
not cause any confusion, or markets where co-owners and/or the sign will not be affected, whether
they are of the same country or from abroad.
72The analogy is not identity; therefore we must refine the consequences of this analysis. The answer
would be different if we were to apply to the new registration or a new market the civil fruit or product
concept (Section 2329 ACC), although we must think whether these new registrations "form one whole
therewith."
73 Cf. ORTUÑO BAEZA (2006), p. 9.
74AIPPI, Resolution, Question Q194, The Impact of Co-Ownership of Intellectual Property Rights on
their Exploitation, available at http://www.aippi.es/pdf/resoluciones-congresos/resolucion-congreso-
q194.pdf . The value of this Resolution is merely doctrinal, but as a result of the discussion of forty
national representations, composed of the most outstanding professionals in each country, it is still
important.
that would be included in a new class75. The same occurs with the expansion of business to other regions or
countries, which must be protected with new registrations. In my view, a new registration preventing full
enjoyment of the common sign is equivalent to a material innovation in the common asset, therefore, it
requires the consent of all the co-owners (Section 2681 ACC), and would have the same effect as selling it or
creating a lien or mortgage, to the prejudice of the right of the other joint owners (Section 1512 and 2682
ACC)76.
Likewise, we can say that any change in the sign by the so-called derived mark will belong to the co-owners
and not the individual applicant 77. In short, no action likely to harm or benefit the jointly-owned asset may be
taken individually by only one of the co-owners78. Complementarily, in terms of Section 2684 ACC, each co-
owner may enjoy the commonly-owned assets for its intended use, provided said enjoyment does not harm it.
Consistently, if the co-owner makes expenses for the benefit of all, these expenses should be refunded
(Section 2685 et seq ACC).
As stated by MARTÍNEZ MEDRANO and SOUCASSE, in the case of trademarks, dilution may result from their
use on products that do not meet the reasonable expectations of consumers, for instance, due to the existence
of products in bad conditions, or due to a repeated failure of performance, or to the infringement of public
order such as the law of fair trading or a consumer-protection law.In short, it refers to any use that is likely to
cause loss of brand reputation in consumers” 79.

75This issue was the subject of the decision delivered in La Salteña S.A. c. ALIJOR SA, op. cit. The parties
had reached an agreement to divide the market being co-owners of the mark, by assigning different
products; in the case it was in general bakery products including confectionery and cakes (ALIJOR) and
pasta, fresh and dried, filled or unfilled pasta, including empanadas dough, pie dough and pastry dough
(La Salteña). The administration of the co-ownership required a contract between the parties, and the
Court of Appeals considered that pancake dough is not a bakery product, and therefore it was not part
of the agreement. Therefore, the plaintiff could apply for the registration of the sign for pancake dough
in his own name. The ruling also determined that under the express agreement, the plaintiff could
change the signs. But the decision did not make clear how the situation would be solved in the absence
of an Agreement between the parties. In my view, without a prior agreement it would not have been
possible to obtain a new trademark registration or the modification of the sign without the unanimous
consent of the co-owners.
76 Article 237 of Decision 486 of the Andean Community Commission has an interesting provision in
this respect: Where trademark registrations have been applied for or obtained to the detriment of other
parties with the same rights, the parties affected may claim such rights with the competent national
authority by requesting their recognition as co-applicants or co-owners of the rights in question. It is a
way to solve a situation like that of the decision under review.
77 Cf. VÁZQUEZ LEPINÉTTE (1996), p. 370. The author applies to marks a general principle of all
intellectual property rights: any change belongs to the joint owners. The application of a derived mark
can only be filed with the consent of all co-owners of the parent mark. In the same way, if the parent
mark is renewed with the consent of all owners, but this consent is not given for the renewal of the
derived mark, the latter is cancelled, since there cannot be a derived mark outside the joint ownership.
78 In all these cases, the co-owner excluded from the new registrations by the co-owner acting
individually, certainly has a legitimate interest to claim these new marks. As regards as how to define
legitimate interest, cf. OTAMENDI (2002), p. 112 et seq.
79 Cf. MARTINEZ MEDRANO and SOUCASSE (2002), pp. 1096-1097. And they continue saying: In the case of
use to the detriment of the mark, it may occur that the co-owners resorted to court to prevent the use
of the same by the co-owner causing harm. In support of this point of view, very solid in my opinion,
they cite FERNÁNDEZ NOVOA: the simultaneous individual use of the joint owned mark by the participants
could lead to situations that would harm not only the interest of the joint property, but also that they
would harm the legitimate interests of consumers. FERNANDEZ NOVOA (1990), p. 219. The consumer
criterion is also important for CHESTEK (2006), p. 683. Likewise is considered by GERVAIS, when basing
one of the possible irreparable harms that would be taken into account to grant one of the provisional
measures of Article 50 of the TRIPS. GERVAIS (2008), Par. 2-402.
In the case under review, the Prosecutor understood that the new registration in Italy, in the name of only one
co-owner, contrary to an earlier national registration, involved bad faith and a behavior contrary to morality
and good practices. On the Posecutor’s own terms, the provisional measure seeks to prevent bad faith moves
aimed at preventing the other party from exploiting in a foreign country a mark which is jointly-owned with
the defendant in Argentina, through its transfer to fake and probably insolvent companies. I think the real
problem lies in the possibility of creating confusion with the new registration. If that were the case, the
solution would be given by the application of the doctrine on the possible coexistence of signs.
Therefore, if the new registration filed by only one co-owner does not create confusion regarding joint
ownership of the trademark, the two may coexist. But if confusion is possible, the independent co-owner
would be as regards the others as any third party and, therefore, the other/s could either prevent it from filing
the new registration or claim ownership of the undivided interests80. This means that harm to the undivided
interests would result from potential confusion and its impact on consumers and on the market exclusivity
granted by the sign.
To this we have to add the aggravating circumstance of bad faith, as the independent co-owner cannot deny
that he knew of the existence of a prior mark, which could lead to the invalidity of the new registration, as set
forth by ATL, Section 24 (b): trademarks are null and void if filed: (...) b) by someone who, when filing an
application for registration, knew or should have known that it belonged to a third party (...). As clarified by
SÁNCHEZ HERRERO, although this Subsection is intended mainly to protect unregistered but previously used
marks, we must interpret also that they provide a special protection for well-known marks and those that had
gained a market before registration81.

4.4 Joint ownership of trademarks in comparative law and CLIP Principles

The issue that we are discussing, and all the complexities it involves, have not either been properly considered
by ther legal systems. The drafting committee of the CLIP principles was the first to consider this matter,
quite well, in my view. Thus, the projected Article 3:401 provides as follows: “Initial ownership and
transferability of shares. (1) The law applicable to initial co-ownership shall be determined in accordance with
Article 3:201. (2) Transferability of the shares of each co-owner shall be governed by the law of the State in
which protection is sought.
In turn, according to Article 3:201, original ownership, including (...) legitimacy of the right to obtain
intellectual property rights through registration, is governed by the law of the country in which protection is
sought. However, paragraph 3 of Article 3:201 establishes an exception: (3) Within the framework of a
contractual relationship (...) the rule applicable to the right to apply for registration is determined in
accordance with Section 5, i.e. the specific regulation of contracts. In turn, Section 5, Article 3:502 provides
that in the absence of a contractual choice of law pursuant to Article 3:501, the contract shall be governed by
the law of the country with which the contract is most closely connected. In contracts having as their main
purpose the creation of protectable subject matter (...) the court, when determining the most closely connected
country will take into account: (b) to the law of the State in which the creator (...) has her/his habitual
residence at the time of execution of the contract." And, if the creation refers to rights in several countries, it
shall be presumed that the State with which the contract is most closely connected shall be that in which the
creator (...) has her/his habitual residence at the time of conclusion of the contract.
Finally, Article 3:402 governs the relations between co-owners. Relations between co-owners, in particular
those related to licensing, waiver, consent and any other form of exploitation, distribution of revenues, the
authority to enforce intellectual property rights and to sue in court, shall be governed by the law applicable to
the parties’ relationship such as a contract, corporate agreement, succession or marriage. Otherwise the law
with the closest connection shall apply. In my opinion, the latter is the correct solution: the relationship

80Regarding the confusion generated by coexistence, cf. SÁNCHEZ HERRERO, 2013, p. 411 y ss. we need to
analyze not just the actual prior coexistence, but the potential confusion that could generate the
coexistence of the jointly owned trademark and the new registration in the name of the individual co-
owner, either at national or international level.
81 Cf. SÁNCHEZ HERRERO (2006), pp. 1273-1441, in comment to Section 24.
between co-owners should be governed by the rules applicable to the agreement in force between them, or
any other legal relationship resulting in the joint ownership.

5 Jurisdictional issues in provisional measures

If the jurisdiction of the main legal action is Argentina, we should now analyze the jurisdiction of the related
provisional measure itself (requesting court). Then we should verify the jurisdiction of the court of the State
of destination of the provisional measure (required court). Therefore, each court retains certain discretion
because the courts should provide protection to both, a plaintiff that should not be deprived from an effective
enforcement of the oncoming judgment, and a defendant who should not be affected in advance and by a
result still uncertain82.

5.1 Provisional measures under Argentine Law

In Argentina, provisional measures are governed by the CCCP and issued by a local court. But provisional
measures intended to be enforced in other countries or requested by a foreign court and enforced in Argentina,
are not provided for in the CCCP. Legal scholars state that, in the absence of a specific treaty, statutory
silence must be covered by the provisions governing judicial cooperation, i.e., Sections 132 and 517-519 bis
of the CCCP83.
The general requirements are: a) verification of indirect international jurisdiction, in the case of orders issued
in other countries, or verification of the court’s own jurisdiction, for those measures to be enforced in a
foreign country; b) it should also be confirmed that the measure does not infringe Argentine international
public policy, for those measures requested by a foreign court, or that it does not infringe domestic laws for
those measures requested by an Argentine court c) compliance with formal requirements, d) verification that
the measures do not affect due process guarantees of the defendant 84.
Since in this case the parties argued over the local court’s jurisdiction to request a measure to be enforced
abroad, I will address the issue from that perspective. In addition, I will discuss the direct application or
application by analogy of other international legal sources, such as the TRIPS or Treaties that allow
international judicial assistance.
Jurisdiction to order a provisional measure is necessary to ensure an effective legal protection for both
plaintiff and defendant. In the first place, it should be effective when rights may be harmed by a delay
(periculum). But also for the benefit of the defendant, since if the provisional measure is issued in his
domicile, it would seem that the defendant is not procedurally harmed. It is better for the defendant if the
plaintiff files a single claim instead of different actions in multiple jurisdictions, which would make defense
more complicated. A single jurisdiction is ultimately to the benefit of both parties.
In addition, also to the benefit of both parties the requirement known as fumus boni iuris or presumption of
sufficient legal basis may be better analyzed by the court where the main legal action was filed, which has all
the information and evidence.

5.2 Application by analogy of international source laws

When the Court of Appeals waived jurisdiction it held that, in the absence of a specific rule governing second
level judicial assistance in a case with Italy, the Treaty on Trade and Factory Marks signed in Montevideo in
1889, should be applied by analogy as the closest law . The Treaty provides in its Article 4: Counterfeiting
and forgery of trade and factory marks will be pursued in the courts under the laws of the State in which the
fraud was committed. The Court of Appeals understands that "since the mark -and logo- <La MARTINA>

82 Cf. COLLINS (1992), pp. 24-26.

83 Cf. DREYZIN de KLOR and SARACHO CORNET (2005), p. 165.
84I will not develop any further this issue because it is unnecessary in the review of this judgment.
Anyway, it is a general mandatory requirement for both the requesting and the requested courts, that
when issuing or executing a trans-border provisional measure the latter does not affect the human and
constitutional rights of the defendant. Cf. COLLINS(1992), p. 179 et seq.
was allegedly registered in bad faith by the defendant with the Italian Patent and Trademark Office, (...) the
Argentine courts lack jurisdiction to decide as regards the provisional measure ".
In my opinion, the Court of Appeals made two mistakes in the application by analogy. Section 16 ACC states
that the principles of similar laws shall be followed. In order to find out which instruments are available to fill
the legal gap or statutory silence (gap-filling), we must know if the issue is essentially connected to the
international trademark system, to international judicial assistance or, even more specifically, to provisional
measures regarding trademark issues.
First, it may be useful to recall some ideas about analogy, as it is a particular method of legal reasoning85.
Then we shall be able to identify the specific rules we are seeking for. In the case of statutory analogy
(analogia legis) it is a procedure that removes secondary or non-defining elements from the legal description
of the rule, thus defining a more precise issue that enables to find an analogy of the case provided in the law
with the new case. In other words, statutory analogy is considered as an interpretive argument, which refers to
the application of a legal norm intended to regulate one case to an essentially similar case for which no legal
norm exists. Only non-substantial elements may be incompatible. On the other hand, in the case of legal
analogy (analogia iuris), we are dealing with a group of particular provisions which are based on the same
principle, which can be obtained inductively from these different but similar legal norms 86. We have here two
problems: a) which aspects are inessential or secondary? b) what are the principles that can be drawn and
from which rules? Ultimately, it is intended to determine -through an interpretation process- the values which
once led to the existing rule87.
Therefore, in my opinion, the first mistake of the CA was to analyze analogy from the point of view of
trademark infringement or trademark registration, concluding that jurisdiction is limited by the territoriality
principle. As I mentioned before, this case deals with a trademark co-ownership based on mutual consent and
with the nature and extent of the acts that can be performed by a co-owner without affecting the other co-
owners. This difference is essential, because in the first assumption what is at stake is the country’s
sovereignty while the second refers to the freedom of the parties. That is why should not seek analogy in
trademark matters but in procedure or preventive matters. I think the problem lies in considering the
plaintiff's behavior as counterfeiting, forgery or fraud.
I think the second mistake was to apply by analogy a legal rule referred to marks - and specifically to
infringements - when it should have been applied in relation to an international treaty determining jurisdiction
as regards provisional measures. In this case the problem is inessential, because it does not matter whether the
subject matter of the provisional measure relates to marks, alimonies, a succession proceeding or a right to
privacy. In fact, international instruments, distinguish, at best, between civil and criminal proceedings, but not
in more specific matters. Therefore, if there is no treaty on preventive measures connecting us with Italy, the
court should have applied, by analogy, any other instrument from which the principles governing provisional
measures derive.

85Cf. CIANCIARDO (2005), p. 442. In p. 443 quotes WINDSCHEID: “Analogy is the extension of principles that
can be drawn from the law to cases that differ from those determined in the law only in a non-essential
form.”
86 Cf. REZZÓNICO (1999), pp. 148-149.
87 The fundamental principle of justice according to which similar cases must be decided in the same
way, leads to the analysis of the analogy of cases. What circumstances allow distinguishing the cases to
deal with them differently? This question involves again the relationship between law and precedent.
The application of a law requires comparing the case and the law. We need to match, pursuant to
certain resemblance, what the law sets forth and the factual situation presented. From this matching
arises the sense of the law. We must clarify the sense in which lawmakers have matched the real-life
case group that they considered similar. What has been matched is not really similar. It is abstractly
similar. It is actually analog. Analogy allows the abstraction of any general rule. Hence the enormous
importance of seeing legal rules and cases from the analogy point of view. Therefore, works of
systematic exposition cannot just be limited to give an account of legal rules and general principles.
They must also illustrate the operation of the legal rules in its application to cases. BOGGIANO (2005), p.
XXIX. See also CIANCIARDO (2005), pp. 444-445.
This interpretive process intends to be consistent with the general principles of law, taking into account the
circumstances of the case (last part of Section 16 of the Civil Code). This general rule allows us to
universalize the problem, because these principles allow the so-called hetero-integration (the court applies
other sources and not only the law, i.e., customs, equity, opinion of legal scholars, etc.) due to its expansive
force, not merely logical but as regard values, beyond the legal order, transcending positive law.

5.3 Applicability by analogy of international instruments to decide provisional-measure issues

It is now clear how international instruments available can be useful to us. While none of the agreements that
connect us with Italy regarding international judicial assistance refers to provisional measures, there are some
agreements in place for mere procedural steps and enforcement of judgments (the so-called international legal
assistance of first and third levels, respectively) 88. These agreements cannot be directly applied, and cannot be
applied by analogy either, because the distinction between procedures and documents, final judgments and
provisional or preventive measures is an "essential" aspect89. However we will see that some provisions of
these agreements can be useful to establish jurisdiction of the Argentine court in the case under review.
We must also consider other treaties relating to international provisional measures, which help to establish the
governing principles on the matter. The main treaty to be taken into account is the Inter-American Convention
on Execution of Preventive Measures, adopted by the Conference of Private International Law convened by
the OAS in Montevideo 1979 (CIDIP II). This is a regional agreement, signed by 16 countries in the
Americas and in force in seven of them90. The doctrine underlying CIDIP II can be considered universal.
Therefore, its application by analogy is reasonable91. These sources are significant because they confirm that

88 In trademark matters with Italy, a Treaty share by both countries are the TRIPS Agreement, which
although does not determine the international jurisdiction, we will refer to it below because the ASC
makes direct application of the same.
89 In the field of CIDIPs, each of the chapters of international judicial assistance deserved their own
negotiations, and not necessarily the same agreements have been obtained in each of them. Thus, CIDIP
I adopted the Convention on Rogatory Letters and the Convention on the Taking of Evidence Abroad.
CIDIP II adopted, among others, the following conventions: the Convention on Extraterritorial Validity
of Foreign Judgments and Arbitral Awards, and the Convention on Execution of Preventive Measures.
Thus, Article 3 of CIDIP I on Rogatory Letters, states: This Convention shall not apply to letters rogatory
relating to procedural acts other than those specified in the preceding article; and in particular it shall
not apply to acts involving measures of compulsion. Also for this reason, we have agreements with Italy
in two of the chapters, but not in the one referred to provisional measures. States reserve sovereign
rights for each sphere of action.
90Ratifying countries are: Argentina, Colombia, Ecuador, Guatemala, Paraguay, Peru and Uruguay. For
the current status of ratifications visit OAS website: http://www.oas.org/juridico/spanish/firmas/b-
42.html, accessed April 2, 2013. Cf. NOODT TAQUELA, 2005, pp. 873-906. Other Conventions relating to
the subject could be the Ouro Preto Protocol or the MERCOSUR Protocol on Preventive Measures,
having a structure and content similar to CIDIP II, but which adds Brazil among the participating
countries, or the Treaty on International Procedural Law, Montevideo, 1940, which has been replaced
by CIDIP II because it has the same signatory States and regulated matters.
91 Cf. GONZÁLEZ PEREIRA (2006), p. 1246. This author states that In the absence of specific laws, we
believe that we must apply CIDIP-II or the Protocol on Preventive Measures, since both international
agreements have been adopted by and are in force in Argentina; their solutions must be considered as
general principles adopted by the Argentine law, which must be applied in all the cases where there is
no applicable international treaty governing the issue differently. And he adds in a note: This was held
in the case Mundial Films S.A. v. Penta Films SpA. Juzg. Nac. Com. No. 10, Clerk’s Office No. 19 of the City
of Buenos Aires, judgment of 29/6/1992, unpublished, where the court applied the CIDIP-II Convention
on Preventive Measures to determine a territorial provisional measure in a case with Italy. It was about
the suspension in Argentina of the showing of the film Mediterráneo winner of the 1992 Academy
Award for Best Foreign Film, issued as a provisional measure in connection with the breach of a film
distribution contract. In a case with Mexico, the United States and Switzerland the court also applied by
the required jurisdiction to order provisional measures is vested by the court where the main legal action is
being heard and that the procedure concerns the required court. I will come back to this point.
As mentioned above, the Convention on Mutual Assistance and the Recognition and Enforcement of
Judgments in Civil Matters, signed in Rome on December 9, 1987 and ratified by Law 23,720 is currently in
force between Argentina and Italy. It provides that “for the purposes of establishing the international
jurisdiction of a court requiring assistance is competent if "a) As of the date of filing the complaint, the
defendant was domiciled or resided in the territory of the Party whose judicial authority delivered the
judgment, (...); c) By express or implied agreement by the parties concerned, the contractual obligation in
dispute was or should have been enforced in the territory of that Party; e) the defendant has expressly
submitted to the jurisdiction of such judicial authority, and the law of the requested Party is not contrary to it,
either by choice of domicile, or by means of an agreement on the determination of the applicable law; f) the
defendant when answering the merits of the dispute has not filed a motion to dismiss for lack of jurisdiction;
(...). “
As we can see, although this bilateral agreement does not deal with provisional measures, it establishes rules
on jurisdiction for the enforcement of judgments, and, in four of the possible scenarios, it provides for the
Argentine jurisdiction in the main legal action that then must be enforced in Italy. This is important because if
the Italian court considers as valid the jurisdiction of the Argentine court by recognizing and enforcing the
judgment issued by such court, it must also enforce a provisional measure based on the same jurisdictional
principle. The criteria for positive jurisdiction allocation of the main legal action are multiple: the defendant is
domiciled in Buenos Aires, he has not filed a motion to dismiss for lack of jurisdiction and the contractual
obligation creating co-ownership must be mainly performed in Argentina.
However, the specialty rule seems to have prevailed in the opinion of the Prosecutor and in the judgment of
the Supreme Court since it invokes a specific rule on Intellectual Property, such as the TRIPS Agreement.

5.4 Injunctions in TRIPS

The Prosecutor states in her opinion, that Article 50 of the TRIPS Agreement is directly applicable to the
case. This article authorizes provisional measures ruled inaudita parte where appropriate, in particular where
any delay is likely to cause irreparable harm (…)” 92. At the same time she argues that the Treaty was ratified
by both Argentina and Italy. Perhaps this is one of the most innovative points of the judgment under review,
since, I believe, this is the first time, at least in Argentina, that TRIPS is given such a wide scope.
In TRIPS, IPRs are considered private rights93. As part of the harmonization of international trade required by
the Uruguay Round of GATT, it also establishes minimum standards in the enforcement and protection of
such rights94. These procedures are governed by certain key principles. Among them, we can mention that: a)
they must allow for the effective protection against current and future acts involving an infringement of IPRs,
b) such procedures must be fair and equitable, without involving unnecessary complications, high costs or
undue delays c) decisions must be justified according to the evidence presented by the parties, be timely and
well-founded, d) an adequate review process must be in place, both before judicial and administrative
authorities95.
The provisional measures considered in TRIPS fill a gap in the international legislation on the protection of
intellectual property. The way their provisions were written is more typical of general governing principles,

analogy the CIDIP II, in re C. Nac Crim. y Corr. Fed., First Division, 12/11/1990, case 22222, Incidente
de embargo de A. E. L. With quote of NOODT TAQUELA, 1992, pp. 118-120.
92TRIPS, Article 50, 2. The judicial authorities shall have the authority to adopt provisional measures
inaudita altera parte where appropriate, in particular where any delay is likely to cause irreparable
harm to the right holder, or where there is a demonstrable risk of evidence being destroyed.
93 Cf. WATAL (2001), p. 360.
94 Ibidem, pp. 333-334.
95 Cf. REICHMAN (2008), p. 65.
standards and guidelines, than of detailed terms and specifications 96. Several Argentine court decisions ve
hrecognized the effectiveness of TRIPS, granting it even higher hierarchy than laws, because it is an
international treaty, and decided the direct application of the provisional measures referred to therein, even in
cases of mark confusion97. However, TRIPS are commonly applied to infringement cases and with special
effect in importation cases (border measures) 98.
However, nothing prevents an interested party from applying for provisional measures for cases other than
infringements. The comprehensive scope in which the TRIPS Agreement was drafted provides support to this,
since even when it is mainly intended for the defense against piracy and counterfeiting, it is also possible to
request urgent measures in other cases. The opinion of legal scholars distinguishes between the irreparable
harm caused by an infringement, and that of persistent infringement, since nothing indicates that a different
procedure should be followed in either case, except in the case of preventing goods from entering into the
commercial channels 99. In any case it will be necessary to have a reasonable degree of certainty, admitting
any available evidence.
In the case of a co-owner who files a registration in breach of the joint ownership, or grants licenses outside
the joint ownership agreement or the law, there is a serious risk of infringement, which appears as imminent
and serious. Any potential harm will be irreparable. I understand, therefore, that the possibility of requesting
and ordering a provisional measure under Article 50.2 of TRIPS is within the scope of the Agreement. Thus,
the assignment to third parties, straw men, is a clear case of harm and imminent infringement. Hence,
provisional measures are also useful to prevent future infringements 100.
Paragraph 4 provides that, where provisional measures have been adopted inaudita altera parte, the parties
affected shall be served notice, without delay upon enforcement of the measures at the latest. This will allow
the defendant a proper defense, either to modify, revoke or confirm the measure. Paragraph 6 of Article 50
allows, upon request by the defendant, that the measure be revoked or otherwise cease to have effect, if
proceedings leading to a decision on the merits of the case are not initiated within a reasonable period 101.

6 The provisional measure in Italy, its place of enforcement

This injunction filed before the Argentine court, is intended to be enforced where the assets are located or
where the interested party intends to prevent the harm; in this case, the trademark registration in Italy. For
different reasons, this has been given less consideration in the literature102.

96 Ibidem, pp. 64-65. Also cf WATAL (2001), p. 338

97Cf. ARMANDO (2003), p. 943. Cites, among others, the decision in re S.C. Johnson & Son el Clorox
Argentina S.A., CNFedCivCom, LL 1998-C, 733
98 Cf. LEMA DEVESA (1997), p. 13 y ss. Also GERVAIS (2008), par. 2,404. Likewise, considering only the
infringement, cf. DREIER (1996), p. 264.
99 Cf. DREIER (1996), p. 264.
100 While the TRIPS Agreement refers to the infringer, suggesting a real and actual situation of
infringement, there is nothing to prevent that the actions of any individual provide the likelihood of
infringement. In fact, goods sold under an unlawful license or produced outside the use authorized by
the law to the co-owner would be an infringement. However, WATAL considers that the rule refers to an
actual and real infringement. Cf. WATAL (2001), p. 341. However, he justifies elsewhere the provisional
measures as a way of preventing infringing goods from entering into commercial channels, as well as
the so-called Mareva Injunctions preventing a defendant from transferring assets until the outcome of
the associated lawsuit is decided. Ibidem, p. 344.
101 Cf. GERVAIS (2008), par. 2,406.
102COLLINS mentions three reasons for this silence. First, provisional measures are often requested in
the country where the assets are located, for immediacy reasons. Then, traditionally the execution of
judgments is only required as regards the final decision, i.e., the decision definitively establishing the
rights of the parties. And finally, because an execution usually concerns sums of money derived from
6.1 Appropriate time and procedure for hearing the injunction by the requested court
The general rule establishes that the provisional measure, although ordered by the Argentine court, is to be
enforced in Italy according to Italian laws and procedures. Among other things, the Italian court should verify
the duration of the provisional measure, its renewal conditions and its effects. The court could even warn the
applicant of a deadline to initiate the main legal action - invalidity, claim, amendment- connected to the
completion of the main legal action in the framework of which the provisional measure was sought in
Argentina. It would not be possible to issue a sine die order or that once a judgment has been delivered in the
Argentine legal action, the applicant does not submit it within a reasonable time to the Italian court 103.
The Italian Law on Private International Law (LIDIPr) provides for such procedures and, although the Italian
stage was not reached in the case, I think the injunction would have been allowed 104.
In the first place, Article 4 of the LIDIPr provides that a jurisdiction is valid if the parties have agreed to it or
if the defendant answers the complaint without challenging jurisdiction. Therefore, the Italian court would
have allowed the jurisdiction of the Argentine court in the main legal action. Likewise, the Italian court would
have allowed the Argentine jurisdiction because Argentina is where the defendant's domicile is located
(Section 3). These criteria are also consistent with those of Regulation 44/2001, which are included in the
LIDIPr105.
The LIDIPr also recognizes the incidental question concept, defining it as an issue which, even if not within
the Italian jurisdiction, needs to be solved prior to resolving the main legal action (Article 6). In other words,
if a complaint is filed in Italy claiming joint ownership of a trademark or an amendment of its registration, the
Italian court should have access to the judgment of the Argentine main legal action106.
Regarding the Italian jurisdiction to enforce injunctions, Article 10 of the LIDIPr provides that Italian courts
will have jurisdiction when the order is to be enforced in Italy or when the Italian court has jurisdiction over
the merits of the case. As previously said, the cause of action is based on a joint ownership arising from the
initial relationship, which I said it was a contractual one, with expansive effects over all subsequent
relationships between the co-owners. Once again, I would like to say that we cannot apply the Italian law to
that relationship. The only law to be applied is the Argentine law. Additionally, Article 18.2 is considered a
residual rule for the applicable law, i.e. the law system with the closest connection with the case in question.
As the Italian law does not specifically provide for the law governing the origin of a joint ownership and the
effects thereof, we must apply the general rule of the closest connection, which is the one originated in the
initial relationship between the parties.
However, the most interesting rule, in my opinion, is Article 51 paragraph 2 of the LIDIPr (on real property).
In the first place, it confirms the general territoriality principle: possession, ownership and other real rights
over real and personal property are governed by the law of the State in which the property is located107.
However, then paragraph 2 of Article 51 adds an exception when title depends on a family relationship or on

debts or damages, and rarely provisional measures are requested on monetary assets. Cf. COLLINS
(1992), pp. 121-122.
103 Cf. FEUILLADE M (2008), p. 219.
104Law No. 218 of May 31, 1995. The Spanish translation is available in the International Portal of the
University of Alicante on Intellectual Property and Information Society,
http://www.uaipit.com/files/documentos/0000004947_Ley_de_Derecho_Internacional_Privado_1995_
05_31.htm#2, accessed June 15, 2013.
105 As of January 10, 2015 it will be replaced by Regulation 1215/2012, as indicated by Article 81 of the
latter.
106There is a provision with similar effects in the ALI Principles: § 413. Declarations of Validity,
Invalidity, Infringement, and Ownership of Rights. (1) Except as provided in subsection (2),
declarations by a foreign court of validity, invalidity, infringement, or ownership of intellectual
property rights must be recognized and enforced by the enforcement court.
107Undoubtedly, this rule applies analogically to recordable intangible property as trademarks, which is
ratified by Section 54: Intangible property rights are governed by the law of the State of use.
a contract. Here is our case! A pre-existing contractual relationship governs the subsequent title of the co-
owners over the marks.
The decision would have been similar if Regulation 44/2001, Article 31 had been applied, which provides that
it is possible to apply for an interim, including a protective injunction as may be available under the law of
that State, even if, under this Regulation, the courts of another Member State have subject-matter jurisdiction.
The Italian authorities could hardly claim that their sovereignty would be affected in case they allow the
injunction. The purpose of the request is to stay a proceeding for a limited period of time which in case of
progressing would be irreversible. If the applicant does not provide grounded reasons for continuing with the
restriction, the order would be revoked or otherwise cease to have effect. The same would apply if the
defendant is able to prove the absence of harm once notified, or if the court orders a bond for costs.

6.2 Co-ownership and the Italian joint ownership system.

Another question is whether the Italian trademark joint ownership rules have any aspect that might lead to
reject a provisional measure granted in Argentina. If there were a rule of public order or a principle of the
legal system considered part of the international public order, establishing a specific regulation contrary to the
enforcement of the provisional measure, the latter would be denied.
This is dealt with very briefly in Section 6 of the Codice della proprietà industriale (the Codice) under the
heading “Comunione”108. The legal text provides that: 1. Se un diritto di proprietà industriale appartiene a
più soggetti, le facoltà relative sono regolate, salvo convenzioni in contrario, dalle disposizioni del codice
civile relative alla comunione in quanto compatibili109. This refers to joint ownership provided for in the Civil
Code, Section 1100 et seq., applying such sections where compatible. The situation is therefore similar to that
of other countries of Roman Civil Law tradition.
The Italian legal system also provides for co-ownership arising from a partial assignment of a trademark right,
according to Section 23 of the Codice, which allows a partial transfer of a registration or title 110.
A later addition to the Codice, by means of legislative decree of August 13, 2010, sets forth: 1-bis. In caso di
diritto appartenente a piu' soggetti, la presentazione della domanda di brevetto o di registrazione, la
prosecuzione del procedimento di brevettazione o registrazione, la presentazione della domanda di rinnovo,
ove prevista, il pagamento dei diritti di mantenimento in vita, la presentazione della traduzione in lingua
italiana delle rivendicazioni di una domanda di brevetto europeo o del testo del brevetto europeo concesso o
mantenuto in forma modificata o limitata e gli altri procedimenti di fronte all'Ufficio italiano brevetti e marchi
possono essere effettuati da ciascuno di tali soggetti nell'interesse di tutti (emphasis added)111.
The expression "in the benefit of all" (nell’interesse di tutti) is construed by legal scholars as those acts that
each co-owner can perform individually, but only on behalf and in the benefit of all co-owners. That is, if the
acts of such individual co-owner may affect or harm the interests of all owners, the former should obtain their
prior consent, according to the majorities provided by supplementary legislation or according to the
agreement governing the administration of the jointly-owned asset. This suggests that a new registration can
only be made for the benefit of the joint interest. 112.

108 Cf. MARCHETTI and UBERTAZZI (2007), p. 181 y ss.

109If an IP asset belongs to multiple owners, each owner's relative powers shall be regulated, unless agreed
otherwise, by the provisions on joint ownership estabished in the Civil Code.
110 ZONA (2011), pp. 14 y 21.
1111-bis. In the case of jointly owned IP assets, filing of the patent application, or of a renewal application, if
applicable, payment of maintenance fees, filing of the translation into Italian of the claims of a European
Patent Application or of the text of a granted patent of invention, or an amendment thereof, and any other acts
before the Italian Patent and Trademark Office may be performed by any of said joint-owners in the benefit
of all (emphasis added).
112 Cf. ZONA (2011), p. 53.
This approach arises from Sections 1105-1108 of the Italian Civil Code which traditionally distinguishes
between ordinary and extraordinary acts of administration or disposition 113. A new registration, for the same
products in the same industry and at the local Office, could be considered an act of administration, but it
would need the consent of the majority, proportionally to their interests. On the contrary, the registration in a
different class of trade, or a new registration in a new territory, would be a case of extraordinary
administration, falling into the concept of “innovazione dirette al miglioramento della cosa114” (Section 1108
of the Civil Code). These acts require a special majority of two thirds of the interests held by the joint-owners.
According to the Italian law we could then conclude that a single co-owner can apply for a new registration
without the consent of the other co-owners only if this is for the benefit or interest of the rest, but not for its
own benefit or to the detriment of the other co-owners.
As regards applicable law and competent jurisdiction in a case like this, Italian legal scholars consider that
when the parties have not previously agreed on the administration of the jointly-owned trademark or their
undivided interests, the Italian law should be applied. And, if there is an agreement between the parties but
there is no provision regarding the applicable law, the rules of Rome I shall apply (Regulation 593/2008)115.
Additionally, the governing law will generally depend on the origin of title: among other cases, the rule
provides for partial assignment of a mark, which is the case that gave rise to the joint ownership of La
Martina116.
As mentioned above, a partial assignment of the mark is provided for in Section 23 of the Codice. In the cases
of joint ownership, the opinion of legal scholars highlights the importance of maintaining the quality of the
goods or services identified by the mark 117. It also seems that partial assignment of a sign to be applied on
similar products should be interpreted restrictively, due to the likeliness of confusion that this could cause to
the consumer public118. A provision of the Codice that will be relevant in the Italian proceedings is set forth in
Section 19 : Diritto alla registrazione. 2. Non può ottenere una registrazione per marchio di impresa chi abbia
fatto la domanda in mala fede 119. This means that bad-faith registration of a trademark is unlawful.
In short, although the court required to enforce the injunction would not need to analyze the Italian rules to
allow or deny the order and just focus on the Argentine law where co-ownership originated, even if applying
the Italian law would have reached the same conclusion, both to allow the provisional measure and, if
appropriate, to decree either invalidity of the registration, its amendment, or enforceability of a claim.

6.3 Lis pendens and related proceedings

It is likely that a case like this may give rise to lis pendens or related proceedings120. This could lead the court
- in this case the Italian court - to refuse jurisdiction or to stay proceedings until the other case is decided
upon. This is provided for in Article 7 of LIDIPr. Thus, in an Italian lawsuit related to the co-ownership of the
trademark "La Martina," the Italian court would have stayed proceedings if the foreign judgment could have
had effects on the Italian legal system (Article 7 of the LIDIPr). This provision specifically provides that in
case of a preliminary ruling in a foreign case, the Italian court may stay its proceedings if it considers that the

113 Ibidem.
114 Innovations intended to improve the subject matter.
115AIPPI, Italian National Group, answer to Question Q194, The Impact of Co-Ownership of Intellectual
Property Rights, March 2, 2009, paragraph 6. Available at
https://www.aippi.org/download/commitees/194BA/GR194BAitaly.pdf, last view on 18/6/2013.
116 Cf. ZONA (2011), pp. 16 y 21
117 Cf. MARCHETTI y UBERTAZZI (2007), p. 307
118 Cf. ZONA (2011), p. 23
119 Right to Registration. 2. A trademark that has been applied for in bad faith may not be granted.
120 Cf. FAWCETT and TORREMANS (1998), p. 65, citing the Harrods case.
foreign act may produce effects in the Italian legal system (paragraph 3). This is exactly what I am discussing
here. EU Regulation 44/2001 121. deals with this matter in a similar way
One might also consider that the case under review involves related proceedings. In terms of Regulation
44/2001, Article 28.3. “For the purposes of this Article, actions are deemed to be related where they are so
closely connected that it is expedient to hear and determine them together to avoid the risk of irreconcilable
judgments resulting from separate proceedings.” Although the Regulation governs related proceedings of
claims filed in the European Union, the LIDIPr applies the Regulation even if the defendant is not domiciled
in the territory of a Contracting State, when it comes to one of the matters within the scope of the Convention
(Article 3 of LIDIPr).
It seems appropriate to transcribe Article 2:702 of the CLIP Principles, which defines related proceedings
with precision:
“Related proceedings. (1) Where related proceedings are pending in the courts of different States, any court
other than the court first seized may stay its proceedings. (2) In determining whether to stay proceedings
according to paragraph 1, the court or the courts later seized shall take all relevant factors into account, in
particular (a) which court seized is best placed to adjudicate the fullest scope of the related proceedings
under these Principles; (b) which State has the closest connection to the dispute; (c) the procedural efficiency
of centralized adjudication versus procedural efficiency of cooperation in multistate proceedings. (3) For the
purposes of this Section, proceedings are deemed to be related where they are so closely connected that it is
appropriate to hear and determine them together in order to avoid the risk of inconsistent holdings or
judgments.”
The doctrine emanating from CLIPs can be considered universal. Hence, if there was a legal gap, both the
Argentine and the Italian courts could have resorted to CLIPs to support the case of related proceedings and,
therefore, wait for the judgment delivered in the Argentine main legal action and then enforce its outcome in
Italy.

7 Conclusions
I think that the defendant did the right thing, even if the decision to request in Argentina a provisional
measure intended to have effects in a foreign country implied great difficulties. The facts that the First
Instance Court and the Second Division of the Court of Appeals did not properly understand the procedure,
and that besides being slow, it ultimately proved to be fruitless, do not detract one iota from being right.
Furthermore, it is a great achievement to obtain the recognition of the principles governing international
provisional measures by the Argentine Supreme Court, even if this leaves us with a bittersweet taste of the
final rejection by the First Division of the Court of Appeals. The road is well-paved.
In addition, the opinion of the Prosecutor, endorsed by the Argentine Supreme Court clearly indicated that
ownership issues are beyond the traditional interpretation of the territoriality principle governing IPRs.
Finally, framing provisional measures within Article 50.2 of TRIPS is a novelty relevant to the defense and
protection of IPRs in the international field. This broad interpretation is a major point in favor of the Supreme
Court ruling.
It can be concluded that the doctrine emanating from the judgment discussed above follows the guidelines of
modern private -law doctrine and implies an understanding of the global scope of intellectual property rights.

Acknowledgements

121 Regulation 44/2201, Article 27 1. Where proceedings involving the same cause of action and between
the same parties are brought in the courts of different Member States, any court other than the court first
seized shall of its own motion stay its proceedings until such time as the jurisdiction of the court first seised
is established. 2. Where the jurisdiction of the court first seised is established, any court other than the
court first seised shall decline jurisdiction in favor of that court.
I appreciate the comments of my colleagues at Universidad Austral: Andrés Sánchez Herrero, Guillermo
Cabanellas, Octavio Mitelman, Gabriel Martínez Medrano and María Blanca Noodt Taquela. I would also like
to thank the students of the Master of Intellectual Property (MIP) course, with whom we have discussed this
case during the course on "International Intellectual Property System". I also had the opportunity to talk about
the case with my foreign colleagues: Aurelio López Tarruella, Pedro de Miguel Asensio, Giuseppina Zona
and Ana María Pacón, among others. The documentary and informative contribution of Diego Mayol was
essential to this work.
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