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ARGENTINA: Mid Term Sworn Declaration of Use. New obligation.

• 2019, September
• Gustavo A. A. Sena

The Argentine Trademarks and Trade-names Act No. 22362 was amended during 2018 by virtue of the passing of Act No. 27444, which contained norms that were immediately applicable whereas others needed to be regulated.

Among the latter were those that give cause to this report, which were regulated in 2019 with the issuance of the Executive Order No. 242 and the Supplementary Provision of INPI 123, which became effective in June 2019.

Mid-Term Sworn Declaration of Use, between the 5th and 6th year of validity.  “New obligation”

The legislative reform established a new obligation for the owner of a trademark. After the fifth year anniversary of the granting of a trademark registration and before the expiration of the sixth one, a sworn declaration of the use made of the mark until then should be filed (MTDU).

For the time being, the National Board of Industrial Property (INPI) does not require the filing of evidence, only the filing of the Sworn Declaration of use.


Trademarks affected

The INPI has established that every trademark granted as from January 12, 2013 are affected by this obligation.

We consider that they should have provided that the new requirement was to be applied to those registrations granted as from January 12, 2018, date of the amendment to the trademarks act.  However, the application of this obligation was made retroactive, affecting registrations that had been granted under the former system where this was not required, without citing any valid reason that could justify such decision.


Consequences of failure to file the MTDU

In the event of failure to comply with this obligation, the registration remains valid but a legal presumption is created.  In effect, it will be presumed that the mark is not being used.  However, this presumption is “iuris tantum”, i.e. it allows for the filing of evidence on the contrary.

If the Declaration of Use is not filed until the expiration of the registration, the renewal will not be accepted unless the Declaration of Use is filed and the corresponding official fees are paid.

The fees to be paid is extraordinary and cumulative per year of failure to comply with the filing of the declaration of use.


Grace period to submit the Declaration of Use:

The INPI has established a grace period applicable for all those registrations granted between January 12, 2013 and January 12, 2014, in which cases the declaration of use can be submitted by January 12, 2020, without paying an extraordinary fee.

For those registrations that derive from a renewal, the dates for the commencement and expiration of the term for filing the MTDU and the corresponding grace period are counted as from the expiration date of the renewed registration and not as from the granting date of the renewal.

Composite marks and design marks
Please bear in mind that in the case of composite marks (word+design), they must be used as they were registered.  If they are used with a different design or font type, the trademarks are out of date, in which case you should file new trademark applications for the marks with the new design.

Corporate name as a trademark
Being the mark the main feature of the client's corporate name,  use for the commercial activity may be declared.

Some issues regarding use

The use to be declared in the MTDU, initially, should have the same characteristics as those for renewing the trademark, which -as we will state below- is wider that the use for repelling cancellations for non-use.


Declaration of use at the time of Renewal

No changes have been introduced to the former system. Sections 5 and 20 of the Act provide for that a trademark registration can be renewed indefinitely:
-if the mark has been used within the five (5) years preceding each renewal due date in the commercialization of a product, the rendering of a service or as part of the designation of an activity;

-at the time of applying for the renewal of a trademark registration, a sworn statement shall be filed stating that the mark has been used within the period established in Section 5, at least in one of the classes, or to designate an activity, and the product, service, or activity, as it might correspond, shall be detailed thereon.

Cancellation of a trademark for non-use.  New provisions

Section 26 of the Act was amended and it currently provides for as follows:

Section 26: "The NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY (INPI, as per is Spanish acronym), by its own initiative or at the request of a party, pursuant to the regulations, will declare a mark cancelled, even partially, in relation to the goods or services for which it were not used in our country within FIVE (5) years prior to the cancellation request, unless there have been force majeure reasons.

The decision on the cancellation of the mark will be appealable within thirty (30) days from notice, only directly to the National Appeals Court in Civil and Commercial Federal Matters, and the appeal will be filed with the National Institute of Industrial Property.

The mark will not be cancelled if it is registered but not in use in one class of for some specific goods or services, if the same mark was used in commerce of a good or provided a service of similar or related nature, even in other classes, or if the mark is part of the designation of an activity related to the goods.[...]”

Summarizing, the main changes are as follows:

• Before this reform, cancellation for lack of use could only be declared by a Judge at the request of a party.
• Now, the INPI through the Trademark Office, in an administrative proceeding, which has not been regulated yet, will declare cancellations by its own initiative or at the request of a party. The INPI’s Decision will be appealable directly to the National Appeals Court in Civil and Commercial Federal Matters.
• The scope of the so-called "defensive marks" has been limited. Before, the use of a mark to distinguish any good or service or as a part of the name of an activity could justify use in any of the other 45 classes.
• Now, goods or services in other classes must be "related or similar" to the one in which the mark is being used. The scope of "related or similar" will have to be defined by judicial or administrative rulings.
• It is clear that use can be declared in a more widely manner when renewing a trademark registration than when facing cancellation for non-use.
  

This is all the information we can provide for now regarding these issues.

Finally, we would like to point out that, in general terms, we have provided information on these changes in our newsletters

http://www.sbm.com.ar/en/dnu_marcas.php, related with trademarks.
http://www.sbm.com.ar/en/dnu_marcas2.php, related with patents
http://www.sbm.com.ar/en/reg_opo.php, related with the new procedure for the resolution of oppositions.

Please feel free to contact us should you need any assistance.

SENA & BERTON MORENO
Gustavo A A Sena
gsena@sbm.com.ar

July 20, 2019

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