Latin America

New Trademark regulations in Argentina: Declarations of use, Renewals and Opposition proceeding

Posted on 12/04/2019 by balder

Argentina

On April 3, Decree 242/2019 was published in the Official Gazette, modifying the regulations of the Trademark Law No. 22,362 and its amendments.

The Provision will enter into force on June 3, 2019, and it basically implies the following changes:

  • formalizes the new opposition resolution system
    • The deadline to answer an Office Action for relative and absolute grounds, from its notification, is established in thirty (30) calendar days.
    • If the notification of the Office Action also includes opposition(s), the term to file a response will be of THREE (3) months.
    • Within three months opponent and applicant may settle the conflict amicably, before the opposition is notified to the Trademark Office to undergo there a normal proceeding.
    • It establishes that the direct appeal (which can be filed to appeal a decision of the INPI in a dispute over oppositions) will only be prosecuted between the applicant and the opponent.

  • introduces the compulsory filing of a declaration of use of trademarks
    • Once the trademark has completed 5 years of validity, a declaration of use of the same must be filed.
    • The lack of submission of the declaration of use, will lead to presume the lack of use of the trademark, unless there is evidence on the contrary.
      While we are awaiting further regulations concerning the declarations of use, however please note the declaration of use consists of a sworn declaration (no evidence is required). If the use declaration is not filed, the renewal application will not be prosecuted until said obligation is fulfilled. It does not appear that the PTO will act ex-officio and declare the registration as cancelled due lack of use. A third party still have to file a cancellation action. The cancellation action will he handled at the PTO in future (and not at Court as currently), but this proceeding has not been regulated yet.

  • Introduces modifications in the Filing of the renewal applications
    • The INPI may consider the possibility of a granting a grace period for proceeding with the renewal of trademarks.
    • Renewals may be filed 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 by adding new goods or services that were not protected in the original registration.
    • If the declaration of use is not filed together with the renewal application, the renewal will not continue its process until such obligation is fulfilled and the official fees established has been attended.

Likewise, the Argentine Authority will regulate how the filing of declaration of use will be implemented, as well as other pending aspects of regularization; as soon as this happens, we will inform communicate it.