Newsletters

First part: Trademarks

• 2018, March
• Alfredo M. Sena - amsena@sbm.com.ar / Gustavo A. A. Sena - gsena@sbm.com.ar

Last January 12, Argentine President Mauricio Macri introduced quite an extensive executive order aimed at reducing bureaucracy in the Public Administration and making it more efficient-

Gustavo A. A. Sena and Marcelo Sena analyze the main issues that have the purpose of speed up the proceedings at the National Board of Industrial Property.

Preliminaries

The changes were introduced last January 12, by virtue of an Emergency Executive Order (DNU 27/2018)

This is a constitutional resource that entitles the Executive Power to issue these Executive Orders when exceptional circumstances prevents the following up of the ordinary means established by our Constitution for the passing laws.

In this case, the executive order was issued with the purpose of was aimed at reducing bureaucracy in several areas of the Public Administration, such as Banks, Associations, Food Regulation, Ports, Aviation, Work of Arts, and several other matters among which those related to Trademarks, Patents, Industrial Models and Designs are included.

The DNU had to be validated by both Houses of the Congress.  It was strongly criticized  and caused the opposition parties to place judicial challenges for its nullity and unconstitutionality.

Foreseeing an imminent rejection by the Congress, the Executive Power decided to split the text of the DNU in three bills for Congress approval in the ordinary sessions that started on March 1.

Essentially, the norms established in by the Bills are the same as those in the DNU.

It should be noted that the DNU contained some provisions that were immediately applicable and others that needed regulation.

The INPI is still working in that regulation as it takes for granted that the bill will be approved without modifications.  However, the drafting of the regulation is more advanced in what respects to Patents and Industrial Models and Designs than in Trademark issues, that they plan have completed by the end of March.

Below please find our comments about the main provisions set forth by the DNU, that is currently a bill debated at the Congress.  Please bear in mind that we cannot guarantee that these will be the definite provisions.

Trademarks

The tendency is to change into electronic filings since it is provisioned the requirement of establishing a special electronic domicile, the implications and requirements need to be regulated, and that oppositions shall be filed electronically.  The obligation implied is exaggerated, since no one can be compelled to make petitions to the authorities in a certain and exclusive manner.  Therefore, paper filings will also be an option.

The most significant changes refer to opposition proceedings and cancellation for non-use and nullity of trademarks ones.

In the case of oppositions, until now, if the applicant did not reach an agreement with the opponent -either extra-judicially or in a mediation- and if they did not bring a court action for having the opposition declared ungrounded, the application would become abandoned.

After the amendments, the one-year' term for obtaining the withdrawal of an opposition is reduced to three months.  Once this term expires, the INPI will issue an administrative decision accepting or rejecting any pending oppositions.  The compulsory mediation process prior to a court action is deleted.  INPI's decision will be appealable before the National Court of Appeals in Civil and Commercial Matters (CNACyCF).  The proceeding at INPI, terms, evidence that may be submitted, etc. need to be regulated.

Provisionally, INPI has issued a resolution establishing that the oppositions notified pursuant to the former system where the one-year' term will expire until April 12, 2018 will be received by INPI and forwarded to the Courts for resolution.  If the applicant does not initiate the court action or chose to be subject to the new administrative proceeding, the opposition will be resolved by the INPI.

It should be noted that INPI has suspended the notification of oppositions. We understand this situation will be maintained until the proceeding that applicant and opponent will have to pursue at the administrative instance is regulated.

The cancellation actions for non-use, and nullity of trademarks based on section 24 subsection a (for infringing the norms set forth of by the trademarks law) that used to be heard at the courts, will now be resolved in an administrative instance before the INPI. The corresponding proceeding needs to be regulated.  The decision issued by INPI will be appealable before the CNACyCF). Both the nullity and the cancellation for non-use actions can be declared ex officio by the INPI or at the request of an interested party.

The use requirement has also been modified.  It seems to be that the use can be proved more widely in renewal applications that in cancellation actions. Whereas in renewal proceedings the current rules apply where use in one good or service or as the designation of an activity -either for profit or not- is enough to prove use of the mark, in cases of cancellation for non-use, the use should be shown for “specific goods or services”, or for goods or services of “similar or related nature” of the same or other classes, or if it form parts of the designation of an activity related to the goods/services.

Thus, in cases of cancellation for non-use, the scope of the so called “defensive trademarks” is reduced.
On the other hand, the owner of a trademark, after five years from the granting of the registration of the mark, and before the sixth year is over, must file a Declaration of Use in respect to the use they have made of the mark up until that time.

This provision, in addition to the fact that all official files are nonrestrictively available to the public, leave an unused mark exposed.

In order to avoid this situation, the owner of a trademark that has not been used in the country will have to analyze using it directly or through a licenses, apply for it again with some addition, combination of colors or a type of font.

Finally, the INPI is empowered to take measures such as limit the examination of applications to the absolute prohibitions, leaving those of a relative nature to claims from third parties, or establishing the publication for opposition purposes by third parties for after the granting of a trademark.

The following proceedings will continue to be heard by the Courts with double instance as it will be possible to appeal before the Appellate Court:

• rejections issued by the INPI, for reasons other than an opposition proceeding;
• complaints for discontinuance of use of a mark,
• requests of precautionary measures,
• complaints for damages,
• nullity actions grounded on section 24 subsection b (about piracy) and subsection c (about trademarks registered for speculative sale)

Finally, INPI is empowered to modify the registration or oppositions proceedings, to limit the examination to of the trademark applications to solely the absolute prohibitions or those related to the public order.  The authority could also establish the publication of trademarks for oppositions to be made after the granting of the registration, etc.

We will have to wait and see whether the text of the bills is approved without modifications and how will the INPI will regulate those norms that are not applicable immediately.

SENA & BERTON MORENO was founded in 1937 by ALFREDO SENA and ERNESTO E. BERTON MORENO as a Patent and Trademarks Agency with a stable staff of only four people. Since then, the Firm has grown to reach its current size of forty people, working at our offices located only two blocks away from the Government House and at the heart of the commercial and financial district of the city. Ver más