As previously covered on the MARQUES Class 46 blog, on 11 January 2018, the Argentine government issued Emergency Decree No 27/2018 published in the National Official Gazette, which includes a wide range of provisions devised to curb bureaucracy and simplify administrative proceedings.
Emergency Decree No 27/2018 introduced amendments to the legislation on trade marks, patents and utility models and designs. The modifications strive to simplify the procedures of the National Institute of Industrial Property (INPI) and shorten prosecution periods.
With respect to trade marks, there are substantial changes on the opposition procedures:
- Oppositions should be filed electronically.
- There is a reduction from 12 to three months for the applicant to negotiate the amicable withdrawal of the opposition.
- If the parties fail to reach to a settlement within a three-month period and the opposition is still standing, the Trademark Office (TMO) will take a decision after the parties undergo an administrative proceeding that has still to be outlined by the TMO.
- Applicants do not need to complete a pre-trial mandatory proceeding or file court actions to obtain the removal of the opposition, as currently happens.
- The final details of the procedure are still to be set, but it must, at least, give the opponent the chance to file additional grounds of the opposition and the applicant to defend its position seeking the TMO to declare the opposition unfounded. In addition, the procedure must guarantee parties the opportunity to file evidence in support of their arguments.
- The TMO decision may be appealed within 30 days before the Federal Courts of Appeal.
The most relevant amendment to the opposition procedure (in line with the opposition systems in other nations) is that oppositions will be ruled by the TMO and not by the federal courts. In addition, with this new opposition system, if the applicant does not obtain the amicable withdrawal and decides not to challenge the opposition, the application will not become automatically abandoned and the opposition will be ruled on by the TMO.
Non-use cancellation and nullity actions
The Decree also intends to simplify the cancellation for non-use procedure and nullity actions. These procedures have historically been heard by Federal Court in Argentina. Now, besides opposition cases, under this new decree the local TMO will also decide on cancellation actions for non-use and nullity actions when the trade mark has been granted by the local TMO in breach of the Trademark Law provisions.
Thus, nullity actions based on a trade mark registered in bad faith (section 24 paragraph b) and registered for the purpose of marketing by persons who habitually register marks for that purpose (section 24 paragraph c) will still be heard by the federal courts.
A TMO decision on cancellation for non-use and nullity of a registered trade mark may be also appealed before the Federal Court. The Decree also establishes that the TMO is authorised to request the cancellation of a trademark for non-use. This possibility was not provided in the Trademark Law.
Lapsing of registered trade marks
As for lapsing of registered trade marks, the Decree states that a trade mark registration will not lapse if the mark is used in connection with the goods and services it protects or in connection with related goods or services, even if they belong to a different class. Before this Decree, the use of a mark did not have to be on related products or services in order to maintain a trade mark registration.
Therefore, now the TMO will have the authority to cancel registrations on a partial basis (on the grounds of non-use), with respect to products or services that are unrelated to the products or services for which the trade mark has been used, placing a limit on defensive trade marks.
Furthermore, the new Decree establishes that a sworn statement of use of registered trade marks must be filed on the fifth registration term and before the sixth registration term ends. Apparently the sworn statement of use is the same one that the trade mark owner must file when renewing the trade mark. It seems that is only a statement of use and trademark owners will not have to file evidence of use.
One question that arises is what is the legal consequence of not filing this statement of use between the fifth and sixth registration term. Probably this will be addressed when the TMO issues the regulations to implement these changes.
The two amendments described in the previous paragraphs seem to aim to keep the register clean of non-used trade marks and this is clearly welcomed.
The Decree also establishes that an email address must be included on all trade mark filings where the TMO will serve notice to the applicant of office actions.
Finally, the Decree authorises the TMO to issue any regulation related to the trade mark prosecution procedure that speeds up and simplifies this process or eliminates unreasonable requirements. This could be one or more of the following measures: (i) to limit the substantial examination to refusal based on absolute grounds leaving relative ground refusal to be invoked by trade mark owners; (ii) to accept multi-class filings or (iii) to grant trade marks and then publish them for opposition (the TMO could revoke the trade mark already registered based on the merits of the opposition).
The Decree became effective on 12 January 2018. Since the Decree contains several provisions that will require temporary or implementation provisions, the local TMO called local trade mark associations for a meeting on 17 January 2018 to discuss all these amendments and their possible implementation.
After this meeting, the local TMO issued Resolution No 1/2018 which established those amendments that are currently applicable and those that need regulations issued by the TMO to be implemented.
The new opposition procedure as well the cancellation action for non-use and nullity procedure require regulations to be issued by the TMO to be implemented.
In addition, Resolution No 1/2018 seeks to clarify when the new term of three months to negotiate oppositions starts to apply.
In this regard, the Resolution establishes that all oppositions notified after 12 January 2018 will have the three-month term to negotiate the withdrawal of the opposition.
Oppositions notified before 12 January 2018 and where the deadline falls before 12 April 2018 will be subject to the deadline of the one that was in force (12 months) or the maximum foreseen by the Decree (three months), whichever happens first. This rule will not apply to those opposition notified before 12 January 2018 with a deadline falling after 12April 2018, unless the applicant states that no settlement was achieved with the opponent or the opponent files new grounds of the opposition within three months counted as from 12 January 2018.
An example will help us to try to understand this:
A) Opposition notified on 31 January 2018: the deadline to obtain an amicable withdrawal of the opposition will expire on 30 April 2018 (three months). Here the three-month term applies.
B) Opposition notified before 12 January 2018 and the yearly term deadline falling on 15 February 2018: the 12-month deadline will be applicable since 15 February 2018 comes first to the three-month deadline falling on 12 April 2018. Here the rule described in the above paragraph apply.
C) Opposition notified before 12 January 2018 and the yearly term deadline falls on 15 May 2018: this will not be subject to the rule of the date that comes first, unless the applicant states that no settlement was achieved with the opponent or the opponent files new grounds for the opposition within three months counted as from 12 January 2018.
This new way to calculate the terms has not been tested, so it is advisable to analyse it for each opposition case and wait to see how the local TMO will handle this in practice. In addition, please be advised that the local TMO will rule on oppositions still standing and not already settled.
Many of the amendments introduced to the Trademark Law are welcomed and hopefully will simplify and shorten trade mark prosecution in Argentina. Please be advised that the Emergency Decree No 27/2018 needs to be debated by Congress and these amendments introduced to the Trademark Law will not go through if there are objections by the Permanent Chamber of Congress.
There are still several regulations to be issued in order to implement these amendments. Stay tuned!
Marco Rizzo Jurado is a partner of Allende & Brea and a former member of the MARQUES International Trade Mark Law and Practice Team