New trademark opposition system in Argentina – Resolution No. 183/2018 issued by the Argentine Trademark Office (“TMO”)
In our last newsletter, we informed that the Emergency Decree N° 27/2018, passed into Law N° 27.444, introduced, among other amendments, a new trademark opposition system in Argentina, which regulation by the TMO was pending.
The TMO has recently regulated the new opposition procedure under Res. No. 183/2018, which will be effective as of September 17, 2018.
This new opposition system establishes that, if the parties do not settle the opposition within the 3 months cooling off period established by section 16 of the New Trademark Law, the local TMO will notify the opponents to ratify the opposition (within 15 working days), pay local TMO fees in approx. USD 300.- and file (being optional) additional grounds and evidence to support the opposition.
If the opponent does not ratify and pay the local TMO fees in this non-extendable term, the opposition procedure will not be opened and the opposition will automatically turn into a letter of protest. Please be advised that the letter of protest does not block the application and could be analyzed by the local TMO or not.
Upon ratification of the opposition by the opponent, the local TMO will serve notice of the opposition (and any additional grounds and evidence filed) to the applicant, that will have 15 working days to answer them and offer evidence. The local TMO will decide on which evidence is acceptable or not and order the parties to produce (within 40 working days) the evidence submitted and admitted by the TMO. Upon expiration of this term, the evidence submitted and not produced by the parties will be declared abandoned by the TMO.
Once the evidence stage is closed, the local TMO will notify the parties to voluntary file, within 10 working days, the final pleadings. Within this term, the parties may jointly file a brief informing the TMO that they are under negotiations to settle the opposition. If so, the term to file the final pleadings will be interrupted and the parties will have 30 working days to reach to an agreement. If no agreement is reached, the term to file the final pleadings will be resumed. If the parties reached to a settlement agreement and the opposition withdrawn, the TMO will proceed to conduct the substantive examination of the application.
Upon expiration of the deadline to file final arguments, and in case the parties have not reached an agreement, the TMO will render a decision on the merits of the opposition. Parties may appeal the TMO decision to the Federal Court of Appeal on Civil and Commercial matters.
Finally, Res. No. 183/2018 provides that, in case any of the parties decide to initiate a nullity (based on section 24. paragraph a. of the Trademark Law) or cancellation action for non use against any of the trademarks involved in the opposition procedure, this claim must be filed with the Federal Courts, until the TMO regulated these proceedings.
The TMO will only decide about the merits of the opposition but will suspend the decision to grant for registration or deny the application until the Federal Court issues a final decision on the nullity or cancellation action for non use.
For further information on this topic please contact Pablo A. Palazzi