New Tool for Brand Owners in Argentina: Partial Cancellation of Trademarks Starting on June 2023.

 In Industrial Property

In 2018 the Argentine Trademark Law was amended in several aspects. Some of these changes have affected the cancellation proceedings system for non-use of trademarks.

In the first place, as from 2018, cancellation proceedings for non-use of trademarks are dealt with and decided by the Trademark Office, while previously they were heard by the Federal Courts. 

The second change was the introduction of a partial cancellation action based on the lack of use, which allows any third party with a legitimate interest to claim and obtain cancellation of certain products or services from a certain trademark registration.

As partial cancellation was a novelty in the Argentine system, the Law established a 5-year grace period for filing partial cancellation actions. Such period ends in June 2023.

This means that, starting in June 2023, it is possible to bring partial cancellation actions against trademark registrations, provided they have not been used in Argentina for those products/services, during the last five years. 

However, these partial cancellation proceedings will not be as automatic and objective as those seeking full cancellation of a registration, which are simpler and more straightforward. This is because the Law provides that “a registered trademark which has not been used for a specific class, product or service, shall not be cancelled if the sign has been used in the commercialization of a product or for rendering a service related or similar to it, even if included in other classes, or if the mark is part of a trade name related thereto”

For this reason, anyone intending to obtain partial cancellation of a trademark registration should not only argue and prove that the mark was not used for specific products or services, but also that said products/services are not related or similar to those that have been actually used, even if in a different class.  

Summing up, there is a new tool available in the Argentine system for partially cancelling trademarks that have not been used for all the products/services covered by them, thus allowing other parties to use or register an identical or similar mark for said cancelled products or services.  

The first decisions on these actions by the Trademark Office and their revision by the Federal Courts have not yet been issued. Only when this happens it will be possible to know which criteria will be used to assess affinity among products and services. 

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