New procedure for resolving trademark opposition disputes

Jul 25, 2018

New procedure for resolving trademark opposition disputes

Regulations relating to amendments to the trademark law in Argentina have been finally issued by the Industrial Property Department (INPI). The most relevant features of such regulations include the following:

  1. Abandonment of the single-class system for a multi-class system.
  1. Requirement to file a sworn declaration of use of the mark between the 5th and 6th year of its granting date and validity.
  1. From now on, it is the Trademark Office (and not the Courts) the one that rules in the case of marks which are being challenged on grounds of lack of use.
  1. In this sense , the Office may issue a partial cancellation of a trademark registration on grounds of lack of use.
  1. There is a genuine “Copernican” change in the processing of the opposition proceedings: the Trademark Office (and not the Courts) will rule on the merits of the oppositions and it is now the opponent’s decision to activate the opposition file.
  1. At present, we expect the Trademark Office to regulate items 1), 2), 3) and 4). However, in our opinion, it is possible that said regulations will become valid next year. We will of course keep you duly informed on any update that may arise on this matter.

Regarding the management of the opposition procedure kindly note the following:

  1. Upon service of notice of the opposition by the Trademark Office, there will be a « cooling-off period » of 3 (three) months in order for the parties to the dispute to contact each other with the aim of trying to reach , if possible, a coexistence agreement of the marks at issue. This three months period can not be postponed.
  1. Once this period has elapsed and no agreement has been reached, the Trademark Office will ask the opponent that within a maximum period of time – and which can not be extended for 15 (fifteen) working days – to ratify the opposition filed by paying the required Official Taxes and by providing its relevant evidence.
  1. Subsequently, the adverse party will be notified so that, within the same maximum period of time – and which can not be extended for 15 (fifteen) working days, to file his reply.
  1. The submission of evidence to be made in cases (2) and (3) shall take place within a maximum period of time – and which may not be extended by 40 (forty) working days- and the Trademark Office shall have the power to decide on the merit of the evidence submitted, its acceptance or refusal. The Trademark Office’s ruling on the evidence submitted could not be appealed in this case, but if necessary they could be appealed in a superior judicial proceeding. (point 8).
  1. Once all the evidence has been submitted or if the deadline to do so has expired, both parties will be notified so that they can file their final allegations within a maximum of 10 (ten) working days.
  1. It is important to note that this last period of 10 (ten) days can be postponed – only once – by a new maximum period of 30 (thirty) working days by means of a Mediation procedure, during which it will also be possible to reach a coexistence agreement of the marks at issue before knowing the final decision of the Examiner. It should be noted that an agreement reached during a Mediation procedure has the same legal force as a judicial ruling.
  1. In the event that the opposition is not ratified by the opponent and the Official Fees are not paid in time, the Tardemark Office will treat said opposition as a simple « Call for the attention of the Examiner ». In other words, the Examiner will follow the sole criterion of whether or not there is a likelihood of confusion between the marks at issue without going into greater detail in the analysis of the case. In the event the opposition is not ratified, the applicant will have the opportunity to submit his argument in order to provide the Examiner with all the elements that will be considered important in order to defend his position.
  1. Finally, and faced with a possible unfavorable decision of the Examiner to the interests of the client, it will be possible to move this file forward to Court by commencing a legal action against the Trademark Office.

 

Conclusions: 

We believe that this new opposition procedure will make this matter evolve in the right direction by making it more agile and fast. However, we must express our reservation in connection with the Trademark Office’s decision  regarding the risk of confusion between the marks at issue, which we would be able to evaluate once we know the Examiner’s criteria on his first resolutions.

In view of the above, we are at least inclined to advise our clients, in the case of opposition proceedings, to submit the necessary arguments and evidence from their side in order to « guide » the Examiner’s final decision with all this elements.

We also note that the Mediation procedure – point 6) – is in force and that it will also be a useful instrument to solve this type of litigation as well as to obtain – before the submission of the allegations – additional deadlines if necessary.

Finally, it is important to note that any coexistence agreement reached between the parties involved before the Trademark Office reaches its final resolution on the case, will be accepted by the Trademark Office.

 We shall not fail on keeping you duly updated of the developments on this matter as well as the dispositions that will make these amendments (and other minor amendments) to be fully operative.