Important changes in Argentina trademarks renewal

Source: www.beautifulworld.com

Trademarks not only have a legal content, they are of great economic importance as they promote business, the market and the defense of consumer interests.

In Argentina, a decree has recently been issued that introduces changes in the trademark regulation of its territory.

The most outstanding changes with respect to the measures approved by this new regulation regards to the competence and terms of office actions, renewal of trademarks, nullity of trademarks, actions of expiration for lack of use and the declaration of use through the Mandatory Medium-Term Affidavit for registered trademarks.

First of all, it is important to note that Argentina is not member of Madrid System Convention. 

Therefore, filings of International Applications for trademarks are not allowed in Argentina. 

Nonetheless, Argentina is a member of the Paris Convention, one of the international treaties with the largest assignee countries, with more than 170 States parties. As a result, all those who intend to register their trademarks in Argentina will receive the same treatment as Argentinian nationals.

The Argentine Tango is a source of pride for the country. 

 Source: www.outwardon.com

The state organization responsible for the application of laws for the protection of intellectual property is the National Institute for Intellectual Property (INPI by its initials in Spanish), which is the administrative Authority in charge of the protection of trademarks in this country.

In order to register a trademark in Argentina, a registration application must be filed for each class in which it is requested (The Nice Classification) at the Trademark Office. If the application complies with the legal formalities, the Trademark Office publishes the new mark.

Oppositions to the registration of a trademark must be filed before the National Institute of Industrial Property in the days following publication. 

If no opposition is filed and no confusingly similar prior registrations or other absolute grounds for refusal are found, registration is granted.

Either loved or hаted, Eva Perón is still onе of the emblemаtic charаcters of the Argentina history. Screenshot: movie "Evita" , starring with Madonna

It is also possible to claim for a prior date of application if at the time of filing the application for registration of the trademark in Argentina, such trademark has also applied in any other Member Country of the Paris Convention. 

The priority claim is established in Article 4 of the Convention which grants a priority period of 6 months counted after the application for registration of the mark has been filed for the first time for filing trademark registration applications in other countries.

Through this priority certificate the local authority is required to consider the date of application for registration of the mark as if it had been filed on the same day as in the first country it was filed.

As for the duration of the registration of a trademark, it will be in force indefinitely as long as it is renewed every 10 years and has be used the last 5 years before the renewal at least in one class. The declaration of use procedure can be carried out online.

Regarding the most important changes of the Trademark law in Argentina:

Deadlines for official actions in the application for registration of the mark

•  Partial concessions:

The Trademark Office may grant a partial registration application for some of the goods or services specified in the application, this partial grant denies the rest of the goods or services that were originally requested.

• Renewal of trademarks:

Renewal applications may be filed within 6 months before or after the expiry of the registration to be renewed. This novelty includes a grace period for registration since previously the renewal period was 60 days prior to registration.

• Nullity of Trademarks:

The Trademark Office will resolve nullity cases only when the registered trademark contravenes the provisions of the Trademark Law.

The court will resolve cases of nullity of registrations granted in favor of those who knew or should have known that the registered trademark belonged to a third party and cases of nullity ofregistered trademarks for commercialization by those who develop as a habitual activity the registration of trademarks for this purpose.

The INPI will resolve the refusal or grant of a trademark application filed by a third party. When the trademark application has been filed by someone who knew or should have known that the registered trademark belonged to a third party or by someone who carries out the registration of trademarks for this purpose as a habitual activity.

• Expiry actions due to lack of use:

Any action for revocation for lack of use, total or partial must be initiated before the Trademark Office.

• Mandatory Mid-Term Affidavit for Trademarks:

This declaration will be required in all trademark registrations granted from January 12, 2013 in order to deal with the application for renewal of the trademark registration must be submitted by the owners of the trademarks. 

The period to file is between the 5th and 6th year from the effective date of the mark. The Trademark Office may require the applicant to file this declaration and if the requirement is not satisfied, may declare the expiration of the renewal procedure.

Diego Armando Maradona is widely regarded as one of the greatest football players of all time. Source: www.britannica.com 

The declaration is filed online through an affidavit in which the use that would have been made of the mark up to that time in Argentina is reported. 

Without this declaration, the lack of use of the mark will be presumed and the renewal application will not be processed until it is filed and the INPI fee is paid. 

If the declaration has not yet been filed, the grace period is until January 12, 2020, paying an additional fee fore ach year of non-compliance with this requirement.

With this new requirement for an affidavit, two situations could result:

(a) The mark has been used in Argentina.

In this case, the affidavit must be submitted and the official fee paid.

This declaration constitutes a presumption of use of the registered trademark. Therefore, even if it has been filed, it is possible for any interested third party to question the declaration and, eventually, promote an action of lapse for lack of use (i.e., the presumption of use could be reversed).

If possible, it may be appropriate to complete this affidavit with all the scannable or digital evidence of use available at the time of filing. 

The more complete the affidavit, the greater the presumption of use and the greater the likelihood of discouraging actions of forfeiture.

(b) The mark has not been used in Argentina.

In this case, the registration will be subject to a possible total or partial expiration action, by the INPI (ex officio) or any third party.

Laura Hernandez

HFG Law&Intellectual Property