Celia Lerman, Intellectual Property Lawyer in California & Argentina.

Argentina – Changes in Trademark, Patent and Industrial Design Laws Decree 27/2018 of January 11, 2018

This is a reprint of an article that originally appeared on the Lerman & Szlak website.

On January 11, 2018, Argentina’s executive power released Decree 27/2018, which impacted substantially on IP regulations, focusing on trademarks, patents, and industrial designs.

It is important to note that, although the Decree was released to take effect on the next day, January 12, 2018, Argentina’s Patent and Trademark Office (INPI) has not yet issued the necessary internal norms to implement the changes. Moreover, many of the changes are of questionable legality, having been issued through a Decree and not though an act of Congress.

Therefore, in practice, we cannot yet affirm that the changes are effective on current registrations and applications. We will keep you updated immediately when the complementary norms are issued and the set of changes take effect in practice.

Changes to Trademark Law Nº22.362

  • New Requirements in Applications: A legal electronic address will have to be included in all trademark applications. Our office will provide this address.
  • New Requirements in Opposition Filings: Oppositions will have to be filed electronically and shall include a legal electronic address as well. Our office will provide this as well.

Opposition Procedures: After oppositions are notified to the applicant, there is a 3-month period to obtain the voluntary withdrawal of the oppositions. If no agreement is reached with the opponents, then the INPI will decide the merit of the oppositions at stake. The new procedure replaces the previous system where parties had a 1-year negotiation period, followed by mandatory mediation with no intervention from INPI.

INPI will establish the details of the new opposition procedures, which shall include the opponent’s opportunity to file extended arguments, the right of the applicant to respond to the opposition, and both parties’ rights to file evidence.

INPI’s decision in opposition procedures will be appealable to the Federal Courts of the City of Buenos Aires (which already resolve all trademark opposition matters) within 30 working days after notification of the decisions.

  • INPI’s Intervention in Current Opposition Lawsuits: INPI may intervene in ongoing opposition judicial lawsuits or those that have finished without informing INPI, and decide on the oppositions accordingly.
  • Rejected Applications: Rejected applications for reasons other than oppositions will be appealable to the Federal Courts of the City of Buenos Aires (which already resolve trademark rejections) within 30 working days after notification of the decisions.
  • Public Status of All Trademark Files: All application and registration files become of public and unrestricted access.
  • Trademark Cancellation for Non-Compliance with Trademark Law– New Procedure: INPI shall have the power to declare cancellation of registered trademarks that do not comply with the registration requirements of the trademark law. INPI may act ex officio or upon a party’s request. INPI’s decision shall also be appealable to the Federal Courts of the City of Buenos Aires within 30 working days after notification of the decision.
  • Trademark Cancellation for Non Use – New Procedures and Requirements: INPI shall have the power to declare cancellation of registered trademarks for non-use, for such registrations that have not been used in the country in the past 5-years, except for force majeure based non-use. INPI may act ex officio or upon a party’s request. INPI’s decision shall also be appealable to the Federal Courts of the City of Buenos Aires within 30 working days after notification of the decision.

A registration may not be cancelled if it has been used in commercializing a product or providing a service that is the same or similar to the trademark coverage, even if the product/service belongs to other classes; or if the mark is the name of the applicant’s activity.

As for new requirements, registrants must file a use sworn-declaration after the 5th anniversary of the trademark registration, and before the 6th anniversary.

We believe that due to constitutional reasons (no acquired right may be taken away by form of a Decree), the new requirements would only apply to new registrations. We are keeping track of this requirement closely and will be sending clients special updates as new developments occur.

  • Additional Changes: The Decree allows INPI to include additional changes, such as:
    • Modifying the application procedures and formalities;
    • Limit the substantive examination to those absolute prohibitions or those that affect public order;
    • Establish publication for oppositions after the trademark is granted;
    • Modify requirements for claiming priority rights under the Paris Convention, to allow for priority rights that were not known at the time of filing.

Changes to Patent Law Nº24.481

  • New Requirements in Patent Applications:
    • Priority Documents: Priority documents and their translation may be required in during the substantive examination stage (instead of the current requirement to file the documents in a 90-day period after the application).
    • Priority Rights: Assignment documents must be provided when applicable.
    • Mandatory requirements: The application title, description, drawings, claims and summary must be provided within 30-days from the application date.
  • Conversion to Utility Models: Such conversion may take place within 30-days from the application date, or within 30-days from INPI’s requirement to convert.
  • Preliminary Examination: Responses to the preliminary formal examination must be responded to within a 30-day period.
  • Term to Pay Substantive Examination Fees: The new term changes to 18-months for patents and 3 months for utility models.

The term shortens substantially from the previous period of 3-years from filing. While the INPI has not yet issued any comments, in the coming days we will be sending a special notice to clients with pending applications where substantive examination fees have not been paid yet, to notify them of the new payment deadlines and recommending to pay fees early to preventively protect their applications.

  • Procedure for Utility Models: The INPI shall verify if the minimum substantive requirements are met (novelty and industrial character) and will then publish the application. There will be a 30-day observation period for third parties, in which the third parties may file evidence against the registration. After such period, INPI will proceed to decide if the utility model is granted.
  • Appeals: Rejected applications for patents and utility models may be appealed before the INPI within 30 working days from notification of the rejection.

Changes to Industrial Designs and Models Law – Decree 6673/63

The term Design in this section refers to both industrial models and designs.

  • Protected Products: Protection has been extended to both industrial and artisanal products, which shape and/or outside appearance confer ornamental character.
  • 6-Month Novelty Term: Applications may be filed for designs which have been already released publically, so long as (i) such release is a direct or indirect consequence of the actions of the author or his/her successors; (ii) the release comes from a bad-faith or misbehavior of a third-party, from a contract breach or from another illicit act committed against the author or legitimate successors; (iii) the release is rooted in a mistaken or unlawful publication of the National Direction of Industrial Designs at INPI.
  • Multiple-Design Applications: A design application may now include up to 20 designs only when all of them are applied to or incorporated in to products that belong to the same Locarno classification.

If a new application includes more than one design and does not comply with the requirements for multiple-design applications, INPI may request the applicant to modify the application or divide it in multiple divisional applications accordingly. Divisional applications shall preserve the original filing date and priority if applicable. Rights over the designs emerging from multiple-design applications will be independent one from another, and may be enforced, transferred, taxed, renewed and cancelled separately.

  • Application Requirements: Applications shall now include:
    • An application form;
    • Drawings and/or photographs and/or digital reproductions of the design that sufficiently identify the protected object;
    • Optionally, when the applicant deems necessary, a description of the industrial model or design.
  • Design Renewals: Renewals shall be filed within the last 6 months before their expiration date. They shall also be renewed within the following 6 months after expiration, by payment of an additional fee.
  • Rejections and Appeals: INPI’s rejections shall be appealable within INPI first, and INPI’s final decision shall be appealable to the Federal Courts of the City of Buenos Aires.
  • Deferred Publication: Publication of design applications may be deferred for a maximum of 6-months after granting.
  • Penalties for Infringement: Penalties raise to a fine equivalent to the amount of INPI’s fees for 50 design applications to 330 design applications in the following cases:
    • Manufacturing of design-infringing products;
    • Selling, offering for sale, exhibiting, importing or in any way commercializing design-infringing products;
    • Hiding or covering infringing products or their manufacturers;
    • Invoking design rights maliciously without having the pertaining registrations;
    • Selling third-party design plans as one’s own.

Second-time offenders shall receive fines of double the amounts prescribed.

  • Interactions with Copyright and Patent Rights: In enforcement, design right-holders shall only be able to invoke design rights or copyright rights, but not both simultaneously.

Moreover, a mistaken patent or utility model application may be converted to a design application by applicant’s request.

The changes are numerous and far-reaching. While we will be sending follow-up updates and tailored notifications in individual cases, we remain available to discuss any of the changes and their implementation process upon request. Please contact Celia Lerman and the IP team at ip@lermanszlak.com.


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