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SENA & BERTON MORENO
ATTORNEYS AT LAW
PATENT AND TRADEMARKS AGENTS
News in the procedure for the registration of trademarks in Argentina. INPI Res. 583/25. Comments.
At the end of 2025, INPI issued Res. 583/2025 that introduced changes to the procedure for the registration of trademarks and the criteria to be applied in their registrabiliby examination.
This norm is in line with the power granted to the INPI by law 22.362 to make changes to the procedure and to limit its actions or the scope of the exercise of its police power.
Changes in the criteria to be applied in the substantial examination of trademarks
In trademark applications, the substantive examination is now limited to decide only on absolute prohibitions or those related to public order, about their intrinsic registrability, lack of distinctiveness, the existence of identical prior trademarks, or of signs contrary to morality and good customs, among others.
On the other hand, prohibitions that do not compromise the public order and affect the interests of third parties -relative prohibitions- will be decided by the INPI if the interested party files and opposition, the procedure for which remains unchanged.
As regards this latter issue, the substantial examination excludes the treatment of, for example:
As regards this latter issue, the substantial examination excludes the treatment of, for example:
The existence of similar trademarks whose owners have not filed opposition.
The application of misleading marks, i.e. those that could lead to error as to the nature. quality, properties, origin, or other characteristics of the goods or services to be distinguished.
Name, pseudonym, or portrait of a person who was not spontaneously known to the person reviewing the application.
Changes in the stages of the administrative procedure of the registration of trademarks
Prior formal and substantial examination: Once a trademark application is filed, the Trademark Office shall conduct the formal and substantial examination (strictly as regard absolute prohibitions)
Publication: If no objections are issued or if they are overcome, the application mark shall be published in the Trademarks Bulletin so that third parties file opposition against it within a 30 running days’ term.
Direct granting: If no oppositions are filed, the mark shall be granted without further formalities.
Effective date:
a) The change in the criteria to be applied ex officio in the substantial examinations is already in force and applicable to all the applications that are pending.
b) The formal and substantial examination prior to the publication will become effective as from March 1, 2026.
Comments
Without attempting to exhaust the subject, it appears that, with this regulation, the INPI is setting aside more than a hundred years of action in defense of sound commercial practices and, above all, in the protection of consumers.
Coexistence agreements Very similar but not identical trademarks Well-known trademarks
- By not automatically assessing the likelihood of confusion with earlier trademarks that have been granted or are pending, it is understood that INPI will no longer objects to coexistence agreements, which they had previously refused to accept.
- Although they will continue to object to trademarks that are identical to others that are registered or pending registration, it remains to be seen what criteria they will apply to those that are quasi-identical or very similar,
-Or where the trade mark for which registration is sought is a combination of words or a group of signs which contains, together with other elements, a well-known trade mark, or one which is identical or very similar to other pre-existing trade marks.
Examiners may have different opinions, and if there is no specific indication of the criteria to be applied in such cases, decisions may be contradictory.
Defense of trademarks by their owners. Harassment of applications for registration of confusingly similar trademarks.
It is clear to trademark owners and their counsel that this regulation primarily impacts the defense of their trademarks and the cost of doing so.
Any application that could be confused with existing trademarks will be granted by the INPI unless an opposition is filed and then ratified.
Due to this and the more limited criteria that the INPI will apply, this will lead to an increase in confusingly similar applications by third parties who, tempted by this change in criteria and speculating on the possible lack of opposition and eventual rapid granting, will try to bring their applications closer to successful or well-known trademarks in the market.
This will increase defense costs—opposition plus ratification—without affecting the costs of the various applicants for these trademarks who resort to this behavior to mimic successful or well-known trademarks, as they are only required to pay the application fee. This creates an imbalance between the applicant who is attacking and the opponent who has to defend themself. If the owner of a trademark does not defend themself by facing the higher costs, their trademark will see its distinctive value diminish.
Lack of certainty in the use of the trademark
A trademark application filed when a similar trademark exists for the same goods or services, where the owner of the existing trademark does not oppose the application and the INPI grants the requested trademark, may give rise to invalidity actions to a greater extent than under the previous system, where the INPI examined the likelihood of confusion. This will bring uncertainty in the use of the trademark.
Purposes pursued with this Resolution
For this reason, and contrary to what was stated by the INPI in the Recitals of the Resolution:
It does not seem that the change in the criteria to be applied in the substantive analysis provides legal certainty to those who undertake commercial, industrial, professional, or service activities.
Or that it makes the registration system more efficient, making it more predictable for entrepreneurs, companies, and new productive projects.
Neither does it seem that, with this system, the registered trademark safeguard investments and guarantee the identification of products and services in the market.
The administrative procedure may be more expeditious, but the examination will not have the same legal quality.
There is no doubt that processing times will be reduced, and applying the new criteria to all trademarks currently in process will resolve any backlog that the INPI may have.
The Trademark Office will also have to deal with more work resulting from the increase in oppositions and invalidity actions.
Perhaps the time has come for the INPI to require the applicant of a ‘harassing’ mark who has received an opposition from the owner of the successful or well-known trademark that is being harassed, to state whether they will continue with the procedure, considering their application as withdrawn in case of silence and having the applicant to pay a fee equal to the one that the opponent will have to pay if they need to ratify the opposition, should they decide to continue.
We will have to see what the outcome of applying these new regulations will be in the coming months, whether there will be an increase in harassment of successful trademarks, the filing of oppositions, and actions for invalidity.
SENA & BERTON MORENO
Gustavo
A A Sena
gsena@sbm.com.ar
January, 2026
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