We would like to inform you about a new decree issued by the Executive Branch seeking to optimise and modernise administrative procedures at the Argentinean Patent and Trademark Office.
In case this Decree is approved, the Patent and Trademark Office will be in charge of regulating it so that the changes can be implemented.
In principle, we anticipate the modifications included in the decree that will affect local procedures.
- On the one hand, a special electronic address must be indicated to the Industrial Property Institute, the requirements of which must be regulated by the Institute.
Trademarks
The main change concerns oppositions:
- The term for negotiating with the counterparty is now only three months.
- After this deadline, instead of the mediation procedure and court action, the Trade Mark Office would now be authorised to decide on objections that have not been withdrawn.
- The Trademark Office would have to issue the regulation which should include the possibility for both parties to submit evidence to support their positions. In such cases, the decision issued by the examiner may be appealed to the court of judicial appeal.
- Cancellation actions for non-use and invalidity, which are now under the jurisdiction of the Courts, would be in the hands of the Trademark Office. This office would decide on eventual invalidity and cancellation actions ex officio or at the request of a third party, and only these decisions would be subject to appeal to the appellate courts.
- Partial cancellation based on non-use is now applicable if the mark was not being used in the last five years, in the marketing of related goods or related services or as a trade name.
- There is a new requirement: An affidavit of use of the trademark must be submitted between the fifth and sixth year of the grant of the trademark.
PATENTS
- The priority document and the Power of Attorney are not mandatory, but may be requested by the Patent Office.
- Most procedural terms will be reduced from 90 days to 30 days (e.g. to comply with filing requirements).
- The deadline for paying the official fees for the Fundamental Review will also be shortened from three years to 18 months.
INDUSTRIAL DESIGNS
- With this decree, up to 20 designs can be submitted in a single application, as long as it is included in the same Locarno classification class.
- Photographs and/or digital reproductions may be submitted in lieu of special designs.
- The six-month grace period for renewal of designs after the deadline would be feasible. In addition to being able to request the applicant to postpone the publication of his application for six months.
It should be noted that this Decree includes innumerable modifications to other entities and is being highly questioned by various sectors. We do not rule out unconstitutionality actions against it.
We also inform that meetings are being held with the authorities of the National Institute of Industrial Property, who have so far indicated that they consider the Decree to be in force as of the date following its publication (12 January 2018) and that they are working to issue the necessary regulations.
We look forward to hearing about the implementation and regulation of these amendments and will keep you informed.
As always, you can contact us through any of our channels or by email: gatti@gattiasoc.com.ar and we will be happy to assist you.