Argentina – Substantial amendments to the Trademark Law - Emergency Decree No. 27/2018 and Law No. 27,444
On January 11, 2017, the Argentine government issued Emergency Decree No. 27/2018 published in the National Official Gazette, which include a wide range of provisions devised to curb bureaucracy and simplify administrative proceedings.
The Emergency Decree No. 27/2018 introduced amendments to the legislation on trademarks, patents and utility models and designs. The modifications strive to simplify the procedures of the National Institute of Industrial Property (INPI) and shorten the prosecution periods.
Nowadays, the Emergency Decree has been turned into Law. In this way, Law No. 27,444 introduced the corresponding changes to Trademark Law No. 22.326.
With respect to trademarks, there have been substantial changes on the opposition procedures. These are the following:
• Oppositions should be filed electronically.
• There is a reduction from 12 (twelve) to 3 (three) months for the applicant to negotiate the amicable withdrawal of the opposition.
• If the parties fails to reach to a settlement within a 3 months period and the opposition is still standing, the Trademark Office (TMO) will take a decision after the parties undergo an administrative proceeding that has been outlined by the TMO under Res. No. 183/18 published on July 18, 2018.
• Applicants do not need to complete a pre-trial mandatory proceeding or file court actions with the federal courts to obtain the removal of the opposition.
• The new opposition procedure has been instituted under Res. No. 183/18 issued by the INPI and published on July 18, 2018. The new opposition procedure will be in force as from September 18, 2018.
• The TMO decision may be appealed within 30 days before the Federal Courts of Appeal.
The most relevant amendment to the opposition procedure (in line with the opposition systems in other nations) is that oppositions will be ruled by the TMO and not by the federal courts. The new opposition procedure will be analyzed in the next newsletter to be published in the next days.
The Decree also intends to simplify the cancellation for non use procedure and nullity actions. These procedures have historically been heard by Federal Court in Argentina. Now, besides opposition cases, under this new decree the local TMO will also decide on cancellation actions for non use and nullity actions when the trademark has been granted by the local TMO in breach of the Trademark Law provisions. Thus, nullity actions based on trademark registered in bad faith (section 24 paragraph b) and registered for the purpose of marketing by persons who habitually register marks for that purpose (section 24 paragraph c) will be keep being heard by the Federal Courts. TMO decision on cancellation for non use and nullity of a registered trademark may be also appealed before the Federal Court. The Decree also establishes that the TMO is authorized to request the cancellation of a trademark for non use. This possibility was not provided in the Trademark law.
As for lapsing of registered trademarks, the Decree states that a trademark registration will not lapse if the mark is used in connection with the goods and services it protects or in connection with related goods or services, even if they belong to a different class. Before this Decree, the use of a mark did not require to be on related products or services in order to maintain a trademark registration.
Therefore, now the TMO will have the authority to cancel registrations on a partial basis (on the grounds of non-use), with respect to products or services that are unrelated to the products or services for which the trademark has been used, creating a limit for defense trademarks.
Furthermore, the new Decree establishes that a sworn statement of use of registered trademarks must be filed on the 5th registration term and before the 6th registration term ends.
The two amendments described in the previous paragraphs seem to aim to keep the register clean of non-used trademarks and this is clearly welcomed.
The Decree also establishes that an email address must be included on all trademark filings where the TMO will serve notice to the applicant of office actions.
Finally the Decree authorizes the TMO to issue any regulation related to the trademark prosecution procedure that speeds up and simplifies this procees or eliminates unreasonable requirements. This could be one or more of the following measures: (i) to limit the substantial examination to exclusively refusal based on absolute grounds leaving relative ground refusal to be invoked by trademark owners; (ii) to accept multi-class filings or (iii) to grant trademarks and then publishing them for opposition (the TMO could revoke the trademark already registered based on the merits of the opposition).
The Decree became effective on January 12, 2018. Since the Decree contains several provisions that will require temporary or implementation provisions, the local TMO called local trademark associations for a meeting on January 17, 2018 to discuss all these amendments and their possible implementation.
After this meeting, the local TMO issued Resolution No. 1/2018 which established those amendments that are currently applicable and those that need regulations issued by the TMO to be implemented.
The cancellation action for non use and nullity procedure requires regulations to be issued by the TMO to be implemented.
Many of the amendments introduced to the Trademark Law are welcomed and hopefully will simplify and shorten trademark prosecution in our country. There are still several regulations to be issued in order to implement these amendments. Stay tune.
For further information on this topic please contact Pablo A. Palazzi