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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Anti_Counterfeiting Summit – 2018

Apr 26, 2018

Anti_Counterfeiting Summit – 2018

On April 4, 2018 we have again assisted to the Anti-Counterfeiting Summit held at the Four Seasons Hotel in Buenos Aires City organized by TODOTVMEDIA and Latin America Anti-Piracy & Intellectual Property Consulting (LAAPIP).

We had the opportunity to witness different panels in which topics of great current interest in the field of intellectual property were exposed and debated.

The authors, the television and film industry and the producers of the sector are alarmed by the growing implementation of IPTV (Internet Protocol Television) devices, through which copyright is curtailed.

By acquiring the device and without monthly payments, the user will access a platform to watch movies, series, live cable channels. The companies that develop these devices do not own the copyright but they ilegally take the signals.

While to combat this problem an effective method is the blocking of IP addresses, to achieve this it is required a judicial authorization which usually takes months. All attendees agreed that it is necessary to collaborate with online sales platforms (such as Mercado Libre, Amazon) and the commitment of government authorities to prevent these devices from entering the country.

In addition, representatives of the firms Fox and Turner, the alliance in charge of the transmission of the Argentine football matches, stressed their concern related to the existence of these devices and pointed out that their acquisition not only goes against intellectual property, but it also attempts against the sources of job.

The authorities of the Mexican Institute of Industrial Property (IMPI) briefed on the case of Sportflix Mexico. This platform was intended to be the “Netflix of Sports”, without holding the corresponding authorizations of the trademark and copyright holders, and thanks to an anonymous report received by the Institute, its launch was prevented and its facilities were closed.

Finally, the importance of the Budapest Convention on Cybercrime was highlighted, which basically aims to establish the bases for international cooperation and the exchange of information regarding these crimes. This treaty has 55 State members and fortunately Argentina has started the accession process at the end of last year.

 

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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.

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Anti-Counterfeiting summit

Jul 14, 2017

Anti-Counterfeiting summit

On June 1, 2017, we have attended the 9th Anti-counterfeiting and Content Summit – Tour 2017, which was held in the Four Seasons Hotel in Buenos Aires.

The main aim of this Summit was to debate on online counterfeiting  was to debate about online counterfeiting that infringes on Intellectual Property Rights – especially against Copyright and Related Rights – and to find methods to fight against it effectively.

Several panelists, executives of the audiovisual industry as well as experts in counterfeiting and representatives of regulatory bodies agreed that raising awareness, the renewal of laws and the union of all players in the industry are key elements to tackle the problem.

 There is no doubt that the unstoppable advance of the Internet and the growing development of new technologies facilitate a scenario for the propagation of many illicit in the intellectual property field.

The different exhibitors have understood that many times this problem is generated by the low costs and the speed in the access to the pirate contents by the users of all the ages and from anywhere in the world. From there becomes the need to create legal platforms to access movies, songs, books, television programs, etc., with lower costs and greater benefits for consumers.

It should be noted that Mr. Carlos Del Campo (Deputy Director of the Presidency of La Liga de Futbol Profesional) shared with the audience the good results achieved in Europe through a campaign to combat illegal content reproduction. La Liga has implemented a software that allows real-time search of Web sites that are illegally reproducing copyrighted material, and they have also achieved strong legislative reform.

There is no doubt that all parties involved – authors, entrepreneurs and users – must unite to combat counerfeiting, and should call on governments to create and implement more flexible measures that do not turn intellectual property rights into mere illusions.

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Future increase of the argentinian I.N.P.I. taxes.

Jul 11, 2017

Future increase of the argentinian I.N.P.I. taxes.

Our Trademark Office has announced a future increase of the taxes estimated in a 40% due to the serious inflation affecting our country.

Even though the increase has not been applied yet, we expect it to happen in the course of the coming weeks. In this sense and according to our understanding, the I.N.P.I has planned to apply this increase in two phases, the first phase will be of 20% and the second phase, planned for October, with the remaining 20%.

Despite the fact that this information is still unofficial, we advise our colleagues and clients to take this announcement seriously.

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