Important changes in trademark practice in Argentina
Viernes 17 de mayo de 2019
On June 2, 2019 the decree that regulates the Trademark Law (Decree 242/2019) will enter in force. This rule regulates the amendments provided by the 27,444 Law entitled “Simplification and Debureaucratization for the Productive Development of the Nation”. Among the measures provided by this Decree, the following deserve attention:
- Even when the Trademark Law prohibits the registration of “the natural or intrinsic color of products or a single color applied to them ”, the Decree provides for the possibility of obtaining the registration in those cases in which the color to be registered has acquired supervening distinctive capacity (secondary meaning).
- Similarly, even if the Trademark Act prohibits the registration of “the shape of products” , the rule clarifies that it is possible to obtain the registration of the non necessary and non habitual shape of a product or a shape that has acquired supervening distinctive capacity (secondary meaning) as a result of its use.
- The Trademark Law provides that “national or foreign appellations of origin cannot be registered”. The Decree clarifies that said prohibition includes geographic indications expressly recognized by the Argentine Republic .
- The 10-year life of renewed trademarks shall be counted as from the renewal due date of the renewed registration (and not as from the date the renewal application is accepted).
- The Trademark Office will be entitled to allow the partial registration of a trademark application, i.e. covering only some of the goods or services included in the application. The partial registration implies the refusal of the registration of the rest of the goods or services originally listed in the application.
- The period to answer objections due to formal defects raised by the Trademark Office is shortened to 10 working days. This term applies to those office aciotns related to objections on the correct classification of goods and services. (The period to answer this type of objections was of 30 working days.)
- The period to answer an office action issued by the Trademark Office on the basis of the substantive analysis of the application (such as lack of distinctive capacity or non registrability due to prior records) shall be of 30 calendar days. (Prior to this amendment, this period could be extended up to 150 days.)
- If in addition to the objections raised by the Examiner, the application has received oppositions, the term to file a response shall be of 3 months. In this case, the Trademark Office shall not decide on the Examiner´s objection until the opposition has been resolved. Even in this case, it is highly advisable to file a response to the Examiner´s objection before the end of the term, as the Trademark Office shall not ask the applicant to answer the Examiner´s objection.
- The Trademark Office shall resolve on nullity issues only when the registered trademark infringes the provisions of the Trademark Law. . The courts will decide the nullity of registrations granted to anyone who “knew or should have known” that the registered trademark belonged to a third party . Similarly, the courts shall decide the nullity of those trademarks registered for their commercialization “by anyone whose habitual activity is the registration of trademarks for that purpose” .
- In those cases of trademark applications filed by anyone who “knew or should have known” that the registered trademark belonged to a third party or by anyone “who habitually registers marks for that purpose”, a third party could oppose said applications (or file the so-called “notice of alert” when the term for filing oppositions has expired) proving their nullity, in which case the Board of Industrial Property might resolve the registration or refusal of the applications. This does not apply to registered trademarks with a registration resolution in force, in which case the nullity should be requested to the courts.
- The possibility of allowing a grace period for the filing of renewal applications shall be considered.
- Non-use cancellation actions of any type, seeking either the partial or complete cancellation for lack of use of a trademark registration, should be filed with the Administrative authorities. The Trademark Office still has to establish the procedure for the resolution of these cases.
- It is now required the filing of a use affidavit between the fifth and the sixth year as from the registration date. Said affidavit should informing about the use of the mark in our country until the date the declaration is filed. Renewal applications shall not accepted if the 5th-year use declaration of use is missing.
If the mark to be renewed has not been used in Argentina until the period going from the 5th to the 6th year (for example, if the mark has started being used on the 8th year after registration), at the time of filing the renewal application it will be possible to file an affidavit declaring use in Argentina and pay official fees corresponding to both the mid-term use declaration and the renewal, which requires the filing of a use declaration as well, with any surcharge the Trademark Office might establish.
Considering the new requirement for the filing of a mid-term use declaration, two basic scenarios may occur:
a) The mark has been used in Argentina.
- In this case, the 5th-year use declaration should be filed and the official fees must be paid.
This declaration constitutes a presumption of use of the registered trademark. Therefore, even when said declaration has been filed, any interested third party can challenge the declaration and eventually file a non use cancellation action (i.e. the presumption that the mark has been used may be reversed):
It is highly advisable the use declaration be completed including any evidence of use that can be digitally submitted or scanned and is available at the time of its filing. The more complete the use declaration is, the greater the presumption of use shall be and consequently, the greater the chances of discouraging potential non-use cancellation actions.
b) The mark has not been used in Argentina.
In this case, the registration shall be subject to a potential partial or total non-use cancellation action either ex officio by the Board of Industrial Property or at the request of a third party.
To proceed with the renewal of a trademark registration, the Trademark Office shall accept a mid-term declaration of “non use”, i.e. it will be possible to declare that the registered mark was not used within the first five years, provided it has been used afterwards to comply with the renewal requirement.
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