Exclusion of the suspensive effect in trademarks opposition cases
On December 21st, 2015, the Argentine Executive Power enacted Law No. 27,222, passed by the Argentine Congress on November 25th, 2015, which modifies sections 18 of the Mediation Law No. 26,589 (the “Mediation Law”) and sections 16 and 17 of the Trademark Law No. 22,362 (the “Trademark Law”).
Section 16 of the Trademark Law establishes a one year term for the applicant to obtain the withdrawal of the opposition or to file court actions against the opponent if the opposition is not settled (fulfilling the pre-trial mandatory mediation proceedings before filing the complaint). The Trademark Office will declare the abandonment of the application if the opposition is not withdrawn or if the applicant did not initiate legal actions against the opponent seeking the court to declare the opposition ill founded within this annual term.
Moreover, section 17 of the Trademark Law establishes that the complaint seeking the court to declare the opposition ill founded must be filed with the Trademark Office and that the Trademark Office haves 10 days to send the complaint jointly with the opposition file to the Federal Courts on Civil and Commercial matters. Lastly, section 18 of the Mediation Law established the suspension of the statute of limitation term due to the initiation of mediation proceedings against the opponent.
Law No. 27,222 modifies section 18 of the Mediation Law excluding the suspensive effects of the initiation of mediation proceedings in trademark opposition cases. Section 1 of Law No. 27,222 establishes that the suspensive effect of the statute of limitation term due to the initiation of mediation proceedings will not be applicable to trademark and opposition proceedings set forth in the Trademark Law. Therefore and in view of this amendment, the initiation of mediation will not suspend the annual term set for in section 16 of the Trademark Law to obtain the withdrawal of the opposition or initiating legal actions against the opponent if the opposition is not settled.
In addition, Law No. 27,222 amend sections 16 and 17 of the Trademark Law establishing that an affidavit of the attorney in fact declaring that the pre trial mediation proceedings have been completed must be submitted in order to be able to file compliant seeking the court to declare the opposition ill founded.
Law No. 27,222 will become effective as from 90 days of the publication date.
This article contains information of general interest and it does not constitute a legal opinion about this matter.