Newsletters

Significant Changes. New Opposition Proceeding System.

• 2018, August
• Gustavo A. A. Sena - gsena@sbm.com.ar / Alfredo M. Sena - amsena@sbm.com.ar / Marcelo Saavedra - law@sbm.com.ar

In our previous Newsletters ( Significant changes in Argentine legislation. , Significant changes in Argentine Legislation - Part 2 ), we mentioned the legislative changes introduced in the administrative procedures for trademarks, patents, and industrial models and designs with the issuance of the Executive order DNU 27/2018.

In this regard, two significant developments have occurred.

In general, and affecting the scopes of trademarks, patents, and industrial models and designs proceedings, on June 28, 2018 Act 27444 was enacted, comprising all the modifications set forth by the above DNU related to administrative proceedings for theses three processes, about which we have referred to in the above cited links.

In particular, with respect to trademarks, and considering some of the provisions set forth by Act 27444 became effective immediately while others needed to be regulated, on July 18, 2018, INPI published Resolution P183/2018 which regulates Act 27444 in relation to the new administrative proceeding for oppositions. It should be noted that this regulation will become effective as from September 17, 2018.

In the previous system, if an applicant did not reach an agreement with the opponent -either extra-judicially or at a mediation process- and if it did not bring a court action within one year as from the official notification of the opposition, the application would become abandoned.

After the amendments, in the current system the one year term for obtaining the withdrawal of an opposition was reduced to three months, and the compulsory mediation process prior to bringing a court action was eliminated. Once said term expires, the newly amended procedure will be put to practice, which, as we state below, is no longer resolved by the first instance courts but by the INPI through a decision issued by the National Trademarks Department.

As per Resolution P183/2018, the new opposition procedure is the following:

Notification and three months’ negotiation

Once the trademark application is published and the term for filing opposition expired, the INPI will notify the applicant of any protest that have been filed. Upon such notification, a 3 months’ term for the applicant to negotiate with the opponent the withdrawal of the opposition is opened;

Non-withdrawn oppositions. Notification on the opponent. Term of 15 days

If by the end of the above term the opposition has not been withdrawal, the opponent shall be granted a 15 working days’ term for:

a) ratifying the opposition;
b) paying the official fee, which currently amounts to US$ 300 approximately;
c) at this stage, opponent may chose to enhance the grounds of the opposition and offer any evidence it considers relevant. The documentary evidence should be submitted along with the ratification and enhancement;
d) if the official fee were not paid, the opposition would be considered as a mere “Brief of Warning”, with no binding value for the INPI and with no possibility of giving cause for a judicial appeal.

Notification on the applicant. Term of 15 days

Once the above term expires, applicant will be granted a 15 working days’ term for answering the oppositions that have not been withdrawn, and for offering any evidence it is entitled by right. The documentary evidence should be submitted at this stage. It has not been established that the applicant should pay an official fee.

Evidentiary stage. Term of 40 days

The National Trademark Department will rule on the evidence offered, establish its viability and sustainability and grant a term of 40 working days to both parties to submit it; the decisions issued by the National Trademark Department on the admissibility or inadmissibility of the evidence will be unappealable administratively, but they would be able to be invoked at a later judicial appeal.

Final allegations. Term of 10 days
Once the evidentiary stage is completed, any piece of evidence that has not been submitted by then will be considered dismissed and the parties will have 10 working days to submit the final allegations. During this period, the parties may jointly request the suspension of terms for 30 days (unextendable) to initiate a voluntary mediation process aimed at reaching an agreement. Once the suspension term expires, if the opposition has not been withdrawn, a new 10 working days’ term will be opened for the filing of final allegations.

INPI’s decision
Finally, the INPI will issue an administrative decision accepting or rejecting any pending opposition.

Appeal. Term of 30 days
The decision issued by the INPI will be appealable before the National Court of Appeals in Civil and Commercial matters (CNACyCF) within 30 days.

Our opinion
1) Firstly, we would like to point out that we consider it to be unfair that the official fees are burdened only on the opponent, who is the injured party and defending itself against an application that is deemed to be similar to its own trademark, instead of being burdened on both parties, or on the applicant alone.

We will petition with the authorities asking them to review this issue. In less than a few cases, with the old system, the applicant, having become aware of the grounds of the opposition, failed to pursue the application. If, with the new system, it chose to continue with the proceedings, it would only be fair that the applicant pay an official fee.

2) With the new system, the burden or obligation of moving the proceeding forward has been reversed. Before, it was the applicant who needed to negotiate with the opponent, summon the opponent to a mediation process or bring a court action, if it did not wish to let the application become abandoned.
Now, it will be the owner of a trademark the one who will be forced to move the proceeding forward, if an agreement were not reached with the applicant of a mark that is confusingly similar to its own within the 3 months’ term. Otherwise, the INPI will issue a decision without an enhancement of the arguments or evidence and its decision will be -initially- unappealable.

3) The terms are counted in working days, peremptory and unextendable. They are short and unextendable for the parties but not for the authorities. Specifically, there no deadlines established for the authorities to accept or deny the evidence offered or to issue a final decision.

4) The INPI has not hired any additional personnel to carry out these tasks.

5) The system has its advantages that, if the terms are complied with, make -in theory- the process of a trademark application shorter. However, it compromises the right to a defense of the owner of a trademark, who might be put in a position of having to defend itself against a greater number of confusingly similar applications, paying for official fees that the applicants of those confusingly similar marks would not have to pay.

6) We understand that those trademark applications that have encountered oppositions and the oppositions filed against applications in the name of third parties should be reexamined, in order to decide the steps to be taken in each of those cases and the costs that would have to be borne in either case.

SENA & BERTON MORENO was founded in 1937 by ALFREDO SENA and ERNESTO E. BERTON MORENO as a Patent and Trademarks Agency with a stable staff of only four people. Since then, the Firm has grown to reach its current size of forty people, working at our offices located only two blocks away from the Government House and at the heart of the commercial and financial district of the city. Ver más