Amendments to the Trademarks, Patents and Designs Laws

Jan 16, 2018

Amendments to the Trademarks, Patents and Designs Laws

We wish to inform you that, within the administration of President Mauricio Macri and with the aim to modernize and facilitate the registration processes, as from January 12, 2018 certain amendments to the Trademarks, Patents and Designs Laws have come into force.

 Said amendments have to be endorsed by the Legislative Power and then the Trademark Office will have to allot the necessary means to make them operative; in this sense, the Trademark Office will have to adapt their structures and develop the necessary training for their personnel. This process will require a considerable amount of time until the definitive application of the amendments is possible.

 Please find below the main modifications to be implemented:

TRADEMARK LAW: 

  1. If an opposition, after its notification is not solved between the involved parties within a maximum period of 3 months, the Trademark Office will rule on the matter. However, the right for both parties to widen the legal grounds and submit evidence will be considered.
  2. The Trademark Office will rule over the nullity or the total or partial cancellation on grounds of lack of use  of a registered trademark, ex-officio or at a party’s request.
  3. Once the trademark registration reaches its fifth (5th ) year, and before the sixth (6th) year is accomplished, the owner or the legal representative of the mark must file an Affidavit of Use (Sworn declaration of Use) stating the use the trademark has made up to that moment.

PATENT LAW:

  1. The maximum period of time for requesting the substantive examination of the patent has been reduced from three (3) years to eighteen (18) months.

DESIGN AND INDUSTRIAL MODELS LAW: 

  1. The renewal request can now be filed within six (6) months before the expiration date, and once this period has ended there will be a grace period of six (6) months to file for the renewal paying an special fee.
  2. It will not be mandatory to file a descriptive memory or drawings; photographs or digital reproductions of the model or design to be registered will be accepted.
  3. For a single application it will be possible to file up to twenty (20) models or industrial designs only when all of them are applied to or incorporated into products that belong to the same class according to Lorcano’s Classification.

These amendments will undoubtedly work in favor of the applicants accelerating and simplifying the registration processes. However, we would like to bring to your attention that in order for the above mentioned amendments to be placed in force, the Decrees will have to be published as well as the Trademark Office’s will have to be modified, which will take a considerable amount of time.

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.