Trademarks Law No. 22,362 has been amended by Law No. 27,444 of 30 May 2018, which ratifies the Presidential Decree No. 27/2018 of 10 January 2018.
On 3 April 2019, the Official Gazzette published Decree 242/2019 that regulates the Trademarks Law and its amendments.
One of the reported changes is the obligation to file a sworn declaration of use between the 5th and 6th year of registration, informing on the use of the trademark up to the date of filing of the declaration.
This obligation applies as from the date the new legislation came into effect (12 January 2018), and therefore to all trademark registrations granted as from 12 January 2013.
In view of this:
- In the case of trademark registrations granted as from 13 January 2014, the declaration of use will have to be filed between the 5th and 6th year counted as from the registration date.
- In relation to trademark registrations granted between 12 January 2013 and 12 January 2014, Resolution 123/2019 published on 27 May 2019 has provided an extra term expiring on 12 January 2020 to file the declaration of use, without having to pay an extra TMO’s fee for the late filing.
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 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. For more information,