Covid-19 – Business continuity at C.G. MATUTE & ASOCIADOS S.R.L..

Apr 2, 2020

Covid-19 – Business continuity at C.G. MATUTE & ASOCIADOS S.R.L..

We comply to inform you that given the COVID-19 outbreak, our country has declared a total mandatory sanitary isolation in an effort to combat the spread of the Coronavirus pandemic until December 13, 2020.

In view of this critical situation, our Cabinet has taken all necessary measures to remain operative and attend our Clients and Colleagues requirements and needs.

Finally, please be informed that the Trademark Office is operating as usual and that all deadlines set as from March 12, 2020 until December 13, 2020 have been postponed.

We shall not fail on letting you know any development on this matter.

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New implementations and procedures for the Trademark Office.

Mar 9, 2020

New implementations and procedures for the Trademark Office.
  • Implementation of the TMclass tool at the time of applying for a trademark.

Among the  important reforms that are being carried out at the National Institute of Industrial Property, the one to be highlitghted is the implementation of the harmonized classification database TMClass when applying for a trademark registration (Resolution 288/2019). This new implementation became effective on November 15, 2019.

First of all, it is important to note that every trademark application can only be submitted through the electronic form of the Web Procedures Portal of the Trademark Office, which allowed the implementation of the TMClass.

At the time of the filing of the before mentioned form, the applicant – when listing the aimed products/services to be protected of the chosen class – may do so by selecting them from the TMClass tool. What the TMClass service offers (database managed by WIPO) is the   simplification when selecting the products or services from listings of world harmonized terms.

Likewise, choosing the harmonized system of TMClass, offers the applicant swiftnees and improvement with the application process, since it selects products or services which are directly consulted by the Trademark Office and it allows the registration of a trademark in a shorter time – as long as there are no setbacks in the process.

It is worth mentioning that the using of the TMClass is optional for the applicant. In the event the applicant decides to not to use the TMClass, the products/services to be protected can be manually entered but this will make the registration process to take longer.

Finally, it is important to clarify that as from November 15, 2019 the Trademark Office does not accept trademark applications which scope of protection covers all products/services in the class. Would this be the case, the applicant would have to file the aplication with a detailed list of products/services.

 

  • Expiry Administrative Proceeding for a trademark before the Trademark Office (INPI).

The implementation of the expiry administrative proceeding of a trademark arises from resolution INPI 183/19, in its ANEX IV.

In these short six articles of the above mentioned resolution, it can be highlighted that in order to file an expiry request of a trademark on grounds of lack of use, it must be filed against a trademark that has been registered for more than five years and it has to be proved that the applicant’s subjective right has been affected.

 Having filed the exprity request of a trademark, the owner of the trademark will be served with notice of this objection and will count with a 15 days period to reply and offer proofs to defend their case. Once the owner has answered to the notice or the 15 days period expiration date has passed, the Trademark Office  will issue a resolution based on the proofs, facts and arguments that  arise from the  claim. In the event an unfavourable resolution is reached, it could be attacked by a direct appeal before the Trademark Office within a 30 working days period as from being served with notice of the resolution, in order for the National Chamber of Civil and Commercial Federal Appeals may subsequently resolve.

Finally, this expiry proceeding of a mark must pay an administrative fee, and in the event it is filed in an opposition procedure, the expiry proceeding should be solved by the Administrative Opposition Procedure.

 

  • Nullity Administrative Proceeding of a trademark before the Trademark Office (INPI).

From the previously mentioned resolution – INPI 183/19, ANEX III – it also has to be noted the implementation of the nullity administrative proceeding for a trademark (administrative cancellation action).

As in the previously explained proceeding, this resolution contains six short articles in which the attention is brought to the fact that a nullity request can only be filed against registered trademarks (not against trademark applications) and the applicant must invoke an affected subjective right.

On the other hand, in order for the nullity of a trademark to be  declared ex officio by the Trademark Office, it will have to be a case where an uncorrectable procedural irregularity exists in a trademark application.

Once the nullity is filed,  the adverse party will be served with notice of this action and will count with a 15 days period to respond. Having this period expired and whether or not his notice has been answered, the Trademark Office will issue a final resolution. In the event an unfavourable resolution is reached, it could be attacked by a direct appeal before the Trademark Office within a 30 working days period as from being served with notice of the resolution, in order for the National Chamber of Civil and Commercial Federal Appeals may subsequently resolve.

As in the expiry administrative proceeding, in the event a nullity proceeding is filed in an opposition procedure, the expiry proceeding should be solved by the Administrative Opposition Procedure.

Finally, it is important to note that the nullity actions filed trough the administrative proceeding before the Trademark Office, will only be accepted by the Trademark Office if they are raised in contravention by the provisions of the Trademarks Law Nº 22.362. In the event nullity actions are filed: a) against whom, when appplying for the trademark, knew or should know about those that belonged to a third party, and b) who develops a usual activity of trademark registrations for their marketing, they will proceed via judicial action (according to Article 24, Trademark Law Nº 22.362).

 

Gastón Alejandro Pisni

                           Intellectual Property and Computer Law Attorney

 

 

 

Links:

Resolution 288/2019: https://www.boletinoficial.gob.ar/detalleAviso/primera/219370/20191022?busqueda=2

Resolution 183/2018: http://servicios.infoleg.gob.ar/infolegInternet/anexos/310000-314999/312500/texact.htm

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Mid-term sworn declaration of use

Jul 5, 2019

Mid-term sworn declaration of use

We would like to inform you that on April 3, 2019, Decree Nº 242/2019, regulation of the Trademark Law Nº 22.362 and its amendments, has been published and it has become effective on June 3, 2019.

The most important regulation is made in Article 26, in which it is established that all those trademark registrations granted as from January 12, 2013, will have to file a mid-term sworn declaration of use before the Trademark Office, confirming the use of the mark. In this regard, please note that even though this amendment has become effective on June 3, 2019, the Trademark Office has granted a grace period to file the aforementioned declaration of use for those trademarks reaching their sixth year of granted or that are close to do so. This grace period ends on January 12, 2020.

In view of the above and even though the Trademark Office has not provided the formal requirements, it is presumed that this document has declarative nature and it will not be necessary to accompany documentary evidence.

It is to be noted that the term granted for said presentation will be in the course of the 6th year since the granting date of the trademark or since the date the renewal becomes effective. In the event that this declaration of use is not filed in due time and manner, it will be presumed that the trademark is not in use.

In this respect, we would like to emphasize that even though the Trademark Office will not proceed to repeal the property rights over the trademark registrations in which the affidavit of use has not been filed, they will be susceptible to being attacked on grounds of lack of use – cancellation action – by a third party.

It should be noted that the Trademark Office grants the possibility of filing said affidavit of use once the allowed period has ended, by paying an additional fees.

On the other hand, please be informed that the filing of the affidavit of use will be a mandatory requirement to request the renewal of all trademark registrations which have been granted as from January 12, 2013.

Finally, it is important to note that the new Decree has established that as from June 3, 2019, renewal applications may be submitted six months before its expiration date, as well as, during a six months grace period after it expiration, through the payment of additional fees.

In view of the aforementioned, we would like to take this opportunity to inform you that our Cabinet has already taken the necessary steps to apply the regulated amendments in Decree Nº  242/2019 to our surveillance systems. In this way, we will inform our clients in advance when the affidavit of use will have to be filed before the Trademark Office in due time and manner.

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Brief review of the EU General Data Protection Regulation (GDPR)

Feb 27, 2019

Brief review of the EU General Data Protection Regulation (GDPR)

On May 25, 2016, 20 days after its publication in the Official Journal of the European Union, the GDPR of the European Parliament and the Council came into force, whose application became effective after the transition period of two years, starting on May 25, 2018.

What is the EU looking for with the implementation of the GDPR?

The objective of the regulatory policies of the GDPR is to protect the treatment of personal data of all European citizens and to prevent violations of their privacy. Likewise, it establishes articles in its regulations that refer to the free circulation of these data.

The protection of personal data is a fundamental right according to the Charter of Fundamental Rights of the European Union, in its art. 8, item one; and the Treaty on the Functioning of the EU, in its art. 16, item one.

What does it mean to protect the “treatment” of “personal data”?

The European Parliament is very clear in determining that personal data is “all information about an identified or identifiable natural person”. The key point of the GDPR is the treatment of the mentioned data, which is defined as “any operation or set of operations performed on personal data or personal data sets”.

From the above it appears that the GDPR is aimed at companies – whether located in the EU or not – that deal with personal data of EU citizens, as well as the latter so that they can exercise their rights over them.

As you can see, the regulation has a wide scope, since for example the companies located in a country that is outside the EU and treats personal data of European citizens, must comply with this legislation. In case of non-compliance with the GDPR, data regulators may sanction companies with a fine of up to 4% of their annual global turnover depending on the type of non-compliance. It is for this reason that the EU granted a grace period of two years for it to be implemented.

What new rights does the GDPR add to the previous legislation on personal data of EU member countries?

To the ARCO rights (rights of Access, Rectification, Cancellation and Opposition) that governed in the great majority of the member countries of the EU before the implementation of the GDPR – as for example in Spain through the old Organic Law 15/1999 of Protection of Personal Data-, the so-called POL rights are added (right to Portability – article 20-, right to Oblivion or right to suppress data – article 17-, and the right of Limitation – Art. 18-) . Likewise, the right to transparency of information is remarkable (Article 12).

Briefly, what does each of these personal rights mean that the owner of the personal data has to control them in the hands of third parties?

A-           Access: Right by which the owner of the data can access your personal information that is in the hands of third parties. You can also request information on how to obtain this data.

R-          Rectification: Right to rectify incomplete or erroneous personal data that is in the hands of third parties.

C-           Cancellation: Right by which the owner can delete personal data held by third parties whose purposes have not been adjusted in accordance with the law.

O-           Opposition: Right with which the owner of personal data may object to the use of these, requesting the cease of their treatment.

P-           Portability: The owner who has given personal data to a third party has the right to request them again, in a commonly used and easy to read format, to be transferred to a new data processing entity.

O-          Oblivion: It is closely related to the cancellation or opposition rights but in the digital environment. Holders may request third parties (for example, search engines) the immediate elimination of personal data through links that contain erroneous information, obsolete data or data that no longer meet its original treatment purpose. The right to be forgotten can not be used when it goes against freedom of expression and information.

L-           Limitation of data processing: Right that allows the owner of the data to request, in cases where it is not clear whether personal data should be deleted, that their personal data are only treated with their consent and limit their treatment in the future.

Through these rights, the owner can control their personal data in the hands of third parties.

Who controls compliance with the GDPR?

The control of the regulation is carried out by the control authorities designated by each State party within its territory. Each supervisory authority shall supervise the proper application of the regulation in the EU with complete independence in the performance of its functions (Article 57).

Likewise, the control authorities have the power to investigate and sanction the companies that carry out the processing of personal data (Article 58).

Beyond the autonomy of each main control authority in each Member State, art. 60 provides that there should be cooperation and assistance between the control authorities of different countries within the EU.

On the other hand, the regulation has a “one-stop-shop” system for the EU member states, administered by each supervisory authority.

By way of conclusion, surely you have noticed the implementation of the GDPR having received emails from Facebook, Twitter, Instagram in early 2018 about updating personal data policies; or having entered different websites in which there is a section where you must provide the consent (or not) of the “Terms and conditions of use”, “Privacy policies”, and “Cookies” of the site you are browsing, which are in accordance with the regulation.

Through this consent, the EU seeks to promote an adequate use of personal data and that is treated with transparency, guaranteeing the rights of the holder over them. Also, since there is a common regulation that must be complied with by companies that process data on European citizens, the EU seeks to generate greater responsibility and equality of conditions regarding the processing of personal data.

 

Gastón Alejandro Pisni

Lawyer in Intellectual Property and Computer Law

 

Links:

General Data Protection Regulation (RGPD): https://eur-lex.europa.eu/legal-content/ES/TXT/PDF/?uri=CELEX:32016R0679&from=EN

General Data Protection Regulation (GDPR): https://eur-lex.europa.eu/legal-content/EN/TXT/PDF/?uri=CELEX:32016R0679&from=EN

Règlement Général sur la Protection des Données (RGPD): https://eur-lex.europa.eu/legal-content/FR/TXT/PDF/?uri=CELEX:32016R0679&from=EN

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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.

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