Latin America - The implementation of the trade mark reform continues in Argentina

Nicolás Gutiérrez

IP Advisor – Latin America IP SME Helpdesk

The Argentinian government pushes on with its reform of the national trademark law. After the substantial changes that had been introduced last year seeking to simply the proceedings and render them more efficient (you may refresh your memory regarding those changes introduced last year in our article published at the time here), Decree n°242/2019 enforces some of the changes introduced last year, and aims to serve as a guideline to the interpretation and implementation of parts of the Argentinian Trademark Act. It was published on April 3^rd and will enter into force on June 2^nd of this year.

It is strongly advised that all SMEs be aware of the changes introduced to Argentinian trade mark law and ensure that they receive up to date and specialised advice for the protection of their brands in this territory, especially since some of these modifications apply not only to future trademark applications, but in some cases also to existing trademarks.

Amongst the key elements of this new decree is the specification of the new declaration of use requirement introduced in last year’s reform. A declaration of use now has to be presented between the 5^th and 6^th year of validity. In the absence of such declaration there will be a presumption of non-use of the trademark and any subsequent application for renewal of the trademark will be denied as long as no declaration has been submitted and the corresponding fee paid. This declaration of use requirement has a retroactive effect, which means that it applies to all trademarks registered in the five years period preceding the its introduction, i.e. any trademark which registration expires as from January 12^th of 2023. All SMEs which own an Argentinian trademark registered after that date therefore must ensure that they comply with this obligation if they wish to safeguard their trademark rights in the country.

The decree also introduces the important element that is secondary meaning. Under the old law words and signs used to describe a product or service as well as the shape, colour or packaging of a product could not be trademarks and could therefore not be registered as such. This remains true with one important qualification: the new law now recognises the possibility that a generic word or sign, as well as the shape or the colour of a product may now have acquired distinctiveness and a secondary meaning beyond their descriptive nature through use in commerce and can therefore be registered as trademarks in Argentina.

Furthermore, and as mentioned in last year’s article, there now exists the possibility of partial cancellation of a trademark by the INPI (Argentina’s Patent and Trademark Office) for lack of use. As accompaniment to this, the latest Decree has also introduced the possibility of a partial renewal of a trademark, whereby a trademark owner can, if it so wishes, renew the registration at the end of the 10-year period only for some of the products or services for which it was originally registered. There is however no possibility to make any addition to the list of products and services when renewing a trademark: as before, in order to cover a wider range of products and services a new trademark application will have to be filed.

Below are some of the other precisions included in the Decree which are of interest to any business or person looking to register a trademark in Argentina.

• Like in most countries, a registered trademark is protected for 10 years from the date of grant. This is an important difference with trademarks in the European Union which also last 10 years, but from the date of filing of the application.
• The legitimate interest of one party in having a trademark registered or in opposing the registration of a trademark can be proven by any means.
• The decree specifies that only Geographical Indications which are expressly recognised in Argentina are prevented from being registered as a trademark. Consequently, any GI which is recognised in any other state, but not in Argentina, is a priori registrable in this country.
• Applicants have 30 days to respond to any notification sent by the INPI regarding substantive observations on the application. Once that delay is passed and in the absence of an answer from the applicant, the INPI will dictate a refusal or partial grant of the trademark. Note however that the 30 days period is extended to 3 months where a notification includes both observations from the INPI and an opposition filed by a third party.
• As announced in last year’s reform, all actions regarding opposition and some nullity actions are to be solved by INPI. This decree grants this institution the latitude it needs to set up the relevant processes for said actions, as well as for other internal processes. It will therefore be interesting to see how the INPI decides to set things up, and how efficient it will prove to be in doing so.

Author:

Nicolás Gutiérrez

IP Advisor – Latin America IP SME Helpdesk