Trademarks Law No. 22,362 has been amended by Law No. 27,444 of May 30, 2018, which ratifies the Presidential Decree No. 27/2018 of January 10, 2018.
On April 3 2019, the Official Gazzette published Decree 242/2019 that regulates the Trademarks Law and its amendments.
The most important highlights are the following:
- Products and services will be classified according to the Nice Agreement.
- Shapes and colors that have acquired distinctiveness, as well as the non-necessary or non-usual shapes of products, may be registered as trademarks.
- The Trademark Office ('TMO') may limit and grant a trademark application to cover some of the products/services for which it has been filed.
- Applicants domiciled outside of Argentina must establish a special domicile in the City of Buenos Aires.
- The TMO will determine the procedure for third parties' oppositions. This procedure has already been established by Resolution P-183/18, which came into effect on September 17, 2018 (see below).
- The TMO will establish the procedure for the cancellation of trademark registrations as well as the procedure for non-use cancellation actions. Until this procedure is established, Law No. 19,549 on Administrative Procedures will apply.
- A mid-term sworn declaration of use must be filed in all cases of trademark registrations that have been in force for five years as from the date the new legislation came into force (January 12, 2018). The lack of such presentation will (i) make presume the lack of use of the trademark, and (ii) the renewal application will not be granted until such declaration is filed and the respective TMO fee for late filing is paid.
- The obligation to file a declaration of use has come into effect as from January 12, 2018 (the date the Trademarks Law was amended). In view of this, all trademark registrations granted as from January 12, 2013 must file a declaration of use between the 5th and the 6th year of registration.
As per Resolution 123/2019 published on May 27, 2019, the TMO has provided an extra term expiring on January 12, 2020 to file the declaration of use, without having to pay an extra TMO’s fee for the late filing, to trademark registrations which term to file a mid-term declaration of use falls between January 12, 2018 (trademark registrations granted on January 12, 2013) and June 2, 2019 (trademark registrations granted on June 2, 2014).
- Resolution 123/2019 has also granted a six-month term (a grace period) to file the renewal application (with an extra TMO fee) after the expiration of the registration.Third-Party opposition procedure.
Resolution P-183 of September 17, 2018 established the procedure in relation with third parties oppositions against a trademark application in the following manner:
- A trademark application is published for opposition purposes (approximately four/five months as from filing). As from the date of publication a third party (with a legitimate interest) has a 30-day term (non-extendable) to file an opposition. (There is no change here).
- The TMO will notify the applicant of the grant of a three-month term to reach a settlement with the opponents.
- Upon the expiration of the three month term, and in case the opposition has not been amicably settled, the TMO will notify the opponent and grant an non-extendable 15 working day term to ratify the opposition and initiate an administrative lawsuit before the TMO. This process involves the filing further arguments, evidence and closing arguments. If the opposition is not ratified, this will be considered by the TMO as an informal objection.
- After ratification of the opposition, the TMO will notify the applicant of the oppositions that remain pending, granting a (non-extendable) 15-working-day term to file a response and to file evidence.
- After the response is filed, the TMO will grant a (non-extendable) 40 working day term for both parties to produce evidence. As documentary evidence must be filed by the parties with their respective claim and responses, non documentary evidence must be produced during this 40 working day term. Once the evidence stage is completed, each party will have a 10 working day term to file final arguments.
- If a settlement is reached or if the case is settled through a mediation or conciliation, the parties must notify the Trademark Office. The terms of the settlement, however, do not oblige the Trademark Office.
- The TMO’s decision may be appealed before the Federal Court of Appeals within a non-extendable 30-working-day term as from notification.
- The first to file system where priority is granted to the first to file and the rights are acquired by registration, is still in force.
- The burden of the opposition procedure is now on the opponent.
- The terms set, cannot be extended.
- A mid-term declaration of use must be filed in the case of trademark registrations that have been in force for a five-year term.
- A trademark registration may be renewed and the mid-term declaration of use may be filed, if the trademark has been used on any product/service, even if the use does not correspond to the same class.