After several months of waiting, the INPI regulated the new procedure to resolve oppositions in administrative proceedings, by issuing Resolution P-183/2018.
In this way, one of the main amendments to the trademark registration procedure originally introduced by Decree 27/2018 – and subsequently confirmed by Law 27,444 – becomes effective, aiming to “shortening the term in the proceedings”.
The main features of the new procedure are:
- Upon the expiration of the new three-month term to obtain the withdrawal of oppositions, the opponent wishing to maintain the validity of the opposition must pay a fee for the beginning of the administrative instance and may extend the grounds of the opposition and submit evidence they deem appropriate. If the fee is not paid in term, the opposition that has not been ratified will be considered an “attention writ” (which in local practice is a way of “drawing the attention” of the Trademark Office on a circumstance that would cause the rejection of the application for registration).
- The applicant will be notified of all oppositions that remain in force, so that they may reply to each one of them and offer the evidence that they deem relevant.
- The new procedure establishes an evidentiary term, for a maximum of forty working days. The Trademark Office establishes what will be the admissible evidence and will have an active role in its production, in everything that is related to information in registers and public databases.
- During the term to submit the pleadings, the parties may initiate, by mutual agreement, a mediation or conciliation process.
- The terms are not extendable and cannot be suspended by the parties.
- The resolution on the oppositions may be appealed before the Federal Justice in Civil and Commercial matters.
- On the other hand, the issuance of the corresponding procedure regulating the validity of the modifications related to the resolution of cancellation and nullity of trademarks is still pending. Therefore, if a trademark that received an opposition is also subject of a nullity action because it was granted in contravention of the law or cancellation (whether total or partial), these issues must be brought to the attention of the Federal Justice; in the meantime, the INPI will decide on the oppositions and will save the file until a resolution by the Federal Justice is issued.
The new procedure will enter into force from September 18, 2018 (after the 60-calendar day term has passed, counted from its publication in the Official Bulletin of July 19, 2018 – Link: https://www.boletinoficial.gob.ar/#!DetalleNorma/188258/20180719).
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