15 June, 2018 by moeller Argentina, Argentine Trademark Law, ip articles, Trademark, Trademark Registration 0 comments
Opposing a Trademark Registration in Argentina
According to data from the Argentine Patent Office (INPI) in 2016, there were 71.020 trademark applications and 14.211 trademark oppositions, around 20% of all applications. What’s the procedure for opposing a trademark registration in Argentina?
The Argentine Trademark Law 22362 establishes that every trademark application is followed by a formal examination carried out by the INPI. After the examination, the application is published in the Trademark Bulletin (Boletín de la Dirección Nacional de Marcas). After the publication, third parties have 30 days to oppose the trademark application if they think there may be a potential infringement of their intellectual property rights.
The Opposition Proceedings
Once an opposition is filed against a trademark application, the applicant is given a one-year term from the date he is officially notified of the opposition: within this term, the applicant has to obtain the withdrawal of the opposition through direct negotiations with the opponent, or file proceedings to the Argentine Federal Courts.
The difference with other legal systems is apparent: the INPI is neither allowed to decide on the merit of the opposition, nor can it provide advice to the parties. The opposition procedure takes place between the parties or can ultimately be referred to a Court, but it is never within the competence of the INPI.
Most of the oppositions are dealt and solved through amicable agreements – only a very little percentage reaches the trial stage. Agreements can follow informal, voluntary negotiations between the parties after which the applicant generally agrees to exclude some of the products or services from the trademark application. Within one year from the notification of the opposition, the applicant should provide the INPI with evidence that an agreement has been reached with the opponent. In this case, the INPI will review the agreement between the parties. The INPI has the power to reject the agreement in case the trademarks are similar and may create customer confusion.
If the INPI deems the agreement valid, it will proceed with the next steps of the trademark registration.
It can also happen that amicable negotiations fail or are not pursued by the parties in the first place. In this case, the applicant can directly resort to Court proceedings. It is interesting to note, however, that in order to resort to any judicial action, the applicant must previously comply with a mandatory mediation proceeding. Mediation proceedings were introduced into the Argentine legal system in 1995 and are compulsory for most civil matters. The proceeding has to terminate within the term of one year from the notification of the opposition. This mediation seems a useless step, provided that the parties had the chance to resort to negotiation before. In reality, this mandatory mediation seems to be effective: when the opponent is summoned to a mediation hearing, the applicant signals that he or she is serious about going to trial, and substantial efforts are made to settle the case in this phase.
If the opposition is not withdrawn within the one-year term and the applicant does not start Court proceedings within the same term, the application is considered abandoned.