Argentina – National Institute of Industrial Property Resolution 288/2019
By MoellerIP Team
City of Buenos Aires, October 21, 2019
In consideration of Law No. 22362 on Trademarks and Designations and modifications thereto , regulatory decree 242 dated April 1, 2019, Resolutions 214 of July 11, 2011, No. 266 of October 23, 2012, No. 250 of September 27, 2018, No. 123 of May 23, 2019, all of them issued by the NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY (INPI) and Disposition of former National Organism of industrial Property dated 13 June 1963 and
Article 10 of Annex to the regulatory decree 242/2019 establishes that the proceedings followed in respect to the Authority of Law 22362 on Trademarks and Designations and modifications thereto, must be filed with INPI
Proceedings at INPI can be filed personally or through the INPI´s web page as per Resolution INPI No. P-266/12.
The filings entered personally in the Organism must be made through the forms corresponding to trademark application, trademark renewal and opposition, approved by Annex to Resolution INPI No. P-214/11, which have been further amended several times
Article 1 of Resolution No. P-250/2018 establishes that all cases before INPI shall be filed and followed electronically and shall be filed through INPI´S webpage.
Article 22 of Annex I (IF-2018-47346817-APN-DAL#INPI) of Resolution 250/2018 establishes that INPI shall digitize all filings made through paper and the proceeding shall continue by electronic means.
When filings of new trademarks, renewals, and oppositions are entered through the webpage, users shall complete all information required.
Unlike paper forms which are filed personally in the Organism, forms completed through the webpage have different validations which prevent users from further completing the document when any essential, field has been left in blank reducing thus, the formal observations in this type of proceedings.
In addition, the display of new trademark applications, trademark renewals and oppositions filed by means of the webpage, are almost immediate.
In light of the above, it is necessary to implement a system allowing the electronic upload of the forms corresponding to new trademark applications, renewals and oppositions after which the user may choose to file them electronically or else, download and print them for filing personally at INPI
The data entry through the webpage shall optimize INPI´s internal procedures and will expedite and improve the terms for the completion and granting of the rights claimed in each of the filings.
Those who wish to obtain the registration of a new trademark, must indicate the products and/or services to be distinguished by the corresponding sign.
By means of Disposition No. 3/61 of former National Organism of Industrial Property , in those cases where the applicant intends to distinguish all the articles of a class , it is not necessary to list all of them in the application, but simply indicate that the application is for all the articles of the class, with the expression “all class”
Said norm had the aim of speeding up the formal evaluation of the trademark applications since with just mentioning the number of the Nice class plus the phrase “all class”, it was no longer necessary to examine the correct classification of all the products or services detailed in the application, and also control the correct publication of the sign in the Trademarks Bulletin
Though the said aim was extremely useful in the past, nowadays there are numerous free tools available online which permit the easy classification of products and services pursuant to Nice Agreement
In the last years said tools, in particular “TMclass” handled by the EUIPO, have been consulted and used permanently by the National Department of Trademarks and also, quoted as reference at the moment of objecting some incorrect classification of a product or service of a determined class
Furthermore, Trademark applicants have also started using these tools at the moment of applying for a trademark or to reply to some objection
In light of the foregoing it turns out to be appropriate to promote the use of these modern classification tools by the users of industrial property services in order to facilitate the selection of products or services through lists of terms internationally harmonized
The advantage of the system of individual selection of products and services facilitates competition in the market, since it prevents a TM applicant from protecting all the products or services contained within a class, which in many cases shall not be used in commerce
The data electronic upload system plus the implementation of this harmonized term tools (Tmclass) make the proceeding simpler for the user and optimize human and material resources in the institute, expediting in this way, the proceeding itself.
Although INPI promotes the use of tools that are helpful for the classification and considering there is no list contemplating the universality of all existing products and services, use of this tool is not restrictive for the above purpose, but it will also help the users to include other products or services intended to be protected by their trademarks , in which case INPI will then evaluate them formally by traditional means
Resolution No. 123 of May 23, 2019 approved through Annex thereto, the complementary regulations to Decree 242/19
With the aim of promoting the regulatory simplification it is appropriate to incorporate the present regulation within Annex of Resolution 123 of May 23, 2019
The NATIONAL TRADEMARKS OFFICE, DIGITAL AND INFORMATION TECHNOLOGY OFFICE, ADMINISTRATIVE COORDINATION OFFICE and LEGAL AFFAIRS OFFICE have taken the appropriate measures