Significant changes to trademark law and practice introduced

• New executive order has introduced amendments to regulations on industrial property rights
• Trademark Office will now decide whether an opposition is admissible
• Executive order still subject to approval by Congress

The Argentine government has issued Executive Order 72/2018, effective as of January 12 2018. The order amends or abrogates several rules, with the purpose of simplifying certain proceedings heard by the federal government and its agencies. This includes a chapter containing amendments to the regulations on industrial property rights. These amendments are especially significant for trademarks.

While the effective application of some of the regulations requires that the National Institute of Industrial Property (INPI) issue additional regulations, the provisions of the law that have been modified are no longer considered to be in force. Others do not require additional regulations and are enforceable as of the above-mentioned date.

One of the most important amendments concerns the issue of whether an opposition is admissible or not, which will no longer be decided by the federal courts for the City of Buenos Aires, but will be heard by the Trademark Office, with the possibility of appealing its decisions before the Federal Court of Appeals. The relevant procedure is subject to the adoption of special regulations that will enable the opposing party to file additional grounds for objection. Furthermore, the applicant will be entitled to reply to the opposition, and both parties will be entitled to proffer evidence in support of their respective claims.

The procedure for resolving such objections has not been defined yet - and must be defined shortly. Nevertheless, within three months after the opposition is notified to the applicant, the Trademark Office must decide on its admissibility, although - as stated above - this will depend on the definition of the procedure that must be followed in these cases. In any case, it must be taken into account that the Trademark Office will not declare that an application has been abandoned based exclusively on a failure to obtain the withdrawal of an opposition within the established terms.

Where the applicant has been notified of the objections before January 12 2018, the term for the Trademark Office to examine and resolve such objections will be of one year, as set forth by the previous regulation.

A rejected trademark application may be appealed before the Federal Court of Appeals, except in cases where the application was denied because the opposition raised against it was upheld.

Where a trademark registration was granted in breach of the provisions of the law (eg, lack of publication of the application and granting of the registration despite pending oppositions), the Trademark Office shall declare the nullity of such registration, either at the request of any of the parties or under its statutory authority. The resolution issued by the Trademark Office may be appealed before the Federal Court of Appeals.

At the request of any of the parties or under its statutory authority, and pursuant to the regulations to be issued, the Trademark Office will be entitled to decide that a trademark has fully or partially lapsed due to non-use in Argentina within the five years preceding the lapse request, except in cases of force majeure. A trademark that has been used for products or services similar to those protected by the registration against which the lapse request has been made will not lapse.

Before the end of the five-year period following the granting of a registration, the trademark owner must file an affidavit concerning the use of the trademark up to that date; there is no need to file any evidence of such use.

While some regulations are already in force, INPI must still issue additional regulations for some of the amendments to become applicable. Until then, the new rules will not be in force, even though the provisions of the law that have been modified or abrogated no longer apply.

It is important to bear in mind that this type of executive order is subject to approval by Congress. There is a process that must be followed, which ends with a review by both the House and the Senate. The only way to annul an executive order is for both the House and the Senate to reject it. The House and the Senate cannot modify an executive order - they may only approve or reject it. If one of them approves it, the executive order will gain full effect. Therefore, pending approval or rejection by the House and the Senate, Executive Order 72/2018 is fully in force. In a worst-case scenario (ie, that both chambers reject it), the effects of the regulations contained in it (which trademark applicants complied to) are considered valid.

Fernando Noetinger, Noetinger & Armando, Buenos Aires