Argentina: New Provisions Regarding Trademarks and Patents
With the purpose of simplifying administrative procedures in general, on 10 January 2018, the Argentine Executive Power issued Decree 27/2018, which was published in the Official Bulletin on 11 January 2018, introducing changes to the Trademarks, Patents and Industrial Designs laws.
Whilst some of these provisions require an implementation resolution of the Argentine Trademark and Patent Office (PTO), these are the most important changes:
1.The Decree has reduced to 3 months the term by which third party oppositions have to be settled. If there is no settlement within this term, it is the PTO who will decide on the opposition. The decisions rendered by the PTO may be appealed before the Federal Civil and Commercial Court of Appeals; The effect of this change is that it shortens the term to try to amicably settle the oppositions, it avoids the Court of First Instance procedure and eliminates the compulsory pre-trial mediation stage;
2.The PTO is empowered to handle trademark cancellations actions: i) nullity of trademarks which are granted contrary to the Trademarks Law, ii) non use cancellation actions, including partial cancellation actions which were not permitted. The decisions rendered by the PTO may be appealed before the Federal Civil and Commercial Court of Appeals;
3.Whilst the user requirements are maintained: i) to renew a registration a sworn declaration of use must be filed declaring that the trademark has been used in the last 5 years prior to the expiration of the registration and ii) a third party may file for the cancellation of a trademark registration if the trademark has not been used for a 5 year term counted as from the date the action is filed. The Decree does make some significant changes and authorizes the PTO to partially cancel a registration in relation to the products/services for which the trademark has not been used (unless there is an overlapping with the products used even if they are of another class) and it establishes that Trademark owners will need to file a sworn statement of use on the fifth year (and before the expiration of the sixth) informing the products/services in relation to which the trademark has been used.
1.It will no longer be necessary to file the priority document and its translation, unless these documents are requested by the examiner during the examination stage;
2.The payment term for the substantive examination has been reduced from 3 years to 18 months.
3.Powers of Attorney will only need to be submitted if requested by the PTO.
1.The registration procedure been simplified. It is now possible to file multiple applications in only one filing.
2.It is now possible to file divisional applications.
3.The term for renewal of the registration has been now fixed in 6 months prior to its expiration, but it is also allowed to file the renewal 6 months after the expiration date, subject to the payment of an official fee.
4.The PTO will now accept photographs and/or digital reproductions to be filed with the application as long as these documents sufficiently identify the object seeking protection.
Most of the amendments introduced are subject to the issuance of specific regulation provisions by the Argentine PTO in order to describe the new procedures to be applied.