Trademark Law – New regulations

 In Trademarks

The Executive Power has regulated the amendments to the Argentine Trademark Law (22362) by Executive Order 242/2019, and, at the same time, has repealed the former 1981 regulations. 

Among the regulations issued , we may highlight the following:

  • A broader criterion was set with respect to proof of legitimate interests;
  • Registration of shape, color and designs not constituting the necessary or usual forms of a product and having acquired distinctivity due to the use thereof is no longer forbidden and may now be registered;
  • The National Institute of Industrial Property (INPI) is now the authority in charge of solving opposition, cancellation and section 24 subsection a nullity proceedings . Until the INPI regulates these proceedings, the Law of Administrative Proceedings shall be applied;
  • Geographic indications recognized by Argentina shall be considered designations of origin and registration thereof is prohibited pursuant to Section 3 subsection c of the Trademark Law.

Likewise, and as one of the most substantial changes in the Trademark practice, the aforementioned executive order regulates the obligation to file a declaration of use during the fifth year of registration of the mark.

This obligation had been included in the amendment to the Trademark Law but their effects had been suspended until the proper regulation was passed.

In short, between the fifth and sixth year of registration of the new mark or renewal, the owner is required to file a affidavit stating that the mark is in use or that it has been used in the preceding five years.

The abovementioned Executive Order sets forth that failure to file the affidavit shall have two consequences:

  1. The mark will be presumed not to be in use, unless otherwise proven. This fact may be used by third parties intending to file a partial or total non-use cancellation action of the mark.
  2. When the renewal application to that mark is filed, the INPI shall not continue the renewal proceedings until the statement of use requirement is met and the relevant official fees and additional fines per year of delay are paid. 

Although the effects of these regulations will come into force as of June 3, 2019, the declaration of use obligation is effective as of the date the Trademark Law was amended, namely, January 11, 2018, when the Executive Branch modified the Law by means of an Urgent Decree. I.e., all marks registered as of January 11, 2013 are required to file the abovementioned declaration of use. 

 Please note that the INPI has informally indicated that up to June 3, 2019, in any case where the term to file the relevant declaration of use has expired, a one year extension will be granted and no fines will be applied. 

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