New Decree regulating the Trademark Act is issued (Decree 242/2019 of the National Executive Power)
Decree 242/2019 of the National Executive Power was published in the Official Gazette of April 3, 2019. This decree regulates the 22.362 Trademark Act and its amendments.
Jueves 04 de abril de 2019
The new regulations will become effective as from June 3, 2019 and will completely replace present regulations.
The new rules are in line with the modernization of trademark registration proceedings and the new procedure for the resolution of oppositions by the National Board of Industrial Property (INPI, after its intials in Spanish). Among the different changes, we may mention the following:
1. Trademark Registrations:
1.1. Prohibition to register geographical indications:
- It is clarified that the prohibition to the registration of national or foreign appellations of origin provided for in Section 3, paragraph c of the Law includes the prohibition to register geographical indications expressly recognized by the Argentine Republic.
• Non usual or non necessary shapes having distinctive capacity.
1.2. Prohibition to register geographical indications:
• With regard to the prohibition to the registration of national or foreign geographical indications (Section 3, paragraph c of the Law), it is clarified that it refers to geographical indications expressly recognized by the Argentine Republic.
2. Trademark Renewals:
• The 10-year term will start running as from the expiration date of the registration whose renewal is sought.
• Renewals may be sought for less products or services than those covered by the original registration, but it will not be possible to extend the coverage of a trademark with the addition of new goods or services.
• The declaration of use of a trademark should be submitted in all those trademark registrations that have been registered for FIVE (5) years at the time the Decree becomes effective. The lack of submission of the use declaration will lead to presume the lack of use of the mark, unless there is evidence to the contrary.
If the use declaration is not filed, the renewal application will not be prosecuted until said obligation is fulfilled and the official fee to be determined has been paid.
3. Capacity and proceedings at the Board of Industrial Property (INPI):
• The Board of Industrial Property shall have the capacity to request the reclassification or consolidation of a trademark registration. In case of disparity in the criteria used, the difference shall be resolved by the Board itself.
• The Board of Industrial Property will be entitled to order the registration of trademark applications completely or partially to cover just some of the goods or services included in the application. The partial registration will be subject to appeal and in case of a favorable decision, the goods or services originally refused will be added to the trademark registration.
4. Trademark infringement: The fine imposed in trademark infringement and counterfeit cases, as provided in Section 31 of the Law, is updated.
This is a preliminary report to be complemented in the future on the basis of the resolutions the Board of Industrial Property might issue and the measures that may result from practice under the new rules, along with more detailed communications that specifically address those situations in which the new system directly affects your trademark portfolio in Argentina.
We will be ready to answer any inquiries you might have.
Berton Moreno + Ojam Team.