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