New Regulatory Decree of Amended Trademark Law

The Argentine Trademark Office has regulated, on April 1st 2019, the recent amendments introduced to the Trademark Law. One of the most important aspects is that registrations will remain valid if the mark is used in connection with the goods and services it protects, or with related or somewhat linked goods and services, even if they are classified in a different class. In addition, as set forth in section 26 of the Law, the submission of a sworn declaration of use of the trademark in Argentina will be required between the fifth and sixth year of its registration.

Failure to submit the affidavit shall be construed as lack of use of the mark, unless proof to the contrary and the Trademark Office will be entitled to declare the lapsing of the registration (either ex officio or as a result of a caducity action initiated by a third party). Also, if the fees are not paid within the indicated period and a proprietor intends to renew the trademark, a fine will have to be paid for each year of non-payment.

Therefore, we strongly recommend filing the sworn declaration as stipulated by the Law and its regulatory decree.

The amended Trademark Law refers to the obligation of submitting the sworn statement of use for marks that reach their 5th anniversary of registration. However, it is not clear whether the submission of the mid-term declaration for marks that have been on the Registry for more than five years prior to the date the Law came into force (January 12, 2018) will be required, and the TM Office is expected to clarify this matter in the coming weeks. We will inform as soon as these clarifications are made.

Please do not hesitate to contact us should you have any query about this or any other matter.

New Procedure for the Resolution of Oppositions in Argentina

On July 18, 2018, Resolution P-183 was published in the Official Gazette regulating the amendments made by Law No. 27.444 of de-bureaucratization and simplification, by which significant changes were introduced to the opposition resolution procedure. These modifications will be effective as of September 16, 2018.

Below you will find a link to the main changes that have been introduced by this resolution as well as a detailed description of the new opposition resolution procedure.

Please do not hesitate to contact us should you have a query about this or any other matter.

Law No. 27444 – New IP Regulations in Argentina

With the aim of promoting the simplification and de-bureaucratization of procedures, on June 18, 2018, Law No. 27.444 was published in the Official Gazette, through which amendments were made to the regulations concerning trademarks, patents/utility models, and designs.

While said law is in force, some of the articles are yet to be regulated.

Below you will find a link to the main changes that have been introduced by this law.

Please do not hesitate to contact us should you have any query about this or any other matter.

Industrial Models and Three-dimensional Marks do not protect the functionality of a product

On March 26, 2018, Chamber No. I of the Federal Court of Appeals in Civil and Commercial matters ratified the first instance ruling that had been issued in the file “GENERAL SWEET S.A. against VICTORIA CREAM S.A. about cease of use of trademark” (docket No. 11864/2005) dismissing the plaintiff’s claim in its entirety.

GENERAL SWEET S.A., owner of the trademark “PERSICCO”, had filed a lawsuit against VICTORIA CREAM S.A. (the latter represented by our Firm), for cease of use of an ice-cream container based on a three-dimensional trademark Reg. No. 2.009.841 and an Industrial Model Reg. No. 71.315 consisting in a kidney-shaped container that included, in its interior, a dividing wall and a cavity that the plaintiff alleged to have conceived with the function of accommodating ice-cream samples. Furthermore, the plaintiff demanded that the defendant ceased its unfair practice of using a third party’s image and its attempt to imitate the plaintiff’s commercial style or Trade Dress.

In the first instance, the judge dismissed the claim considering that the containers were included in the category of three-dimensional trademarks which are weak marks. The judge held that the plaintiff’s figurative mark (a container) did not constitute a distinctive mark since what was relevant was the denomination “Persicco” by means of which the products manufactured by the plaintiff were identified, being that these elements were used jointly and further pointing out the selective criteria of the consumer public at the moment of purchasing this type of food (ice-creams). Based on these arguments, after evaluating the containers in their totality applying the traditional comparison criteria and weighting the expert technical opinions, the judge determined that there were no reasonable possibilities of confusion. Additionally, she rejected the unfair practice claim given that, from the study of the different expert evidences included in the procedure, significant differences were apparent.

Having GENERAL SWEET S.A. appealed the first instance decision, the Chamber of Appeals ratified the ruling considering that, even though the containers had a functional similarity, they were unmistakable in their extrinsic aspects and morphological structure. Furthermore, the Chamber pointed out that the small cavity conceived to accommodate ice-cream samples, besides not being novel, was not protected by the plaintiff’s Industrial Model since, in order to obtain it, the plaintiff should have filed a Utility Model application for securing the protection of the functionality of the product, indicating that, from the conclusions of the expert graphic designer‑unchallenged by the plaintiff‑, significant differences between the containers were apparent, which corresponded to the graphical identity of the respective trademarks. This ruling further pointed out that it had not been demonstrated that the plaintiff’s container was a well-known mark nor that it had a distinctive character that represented by itself the PERSICCO trademark, emphasizing that it was the plaintiff’s responsibility to prove said assumptions since they have been invoked as grounds for the lawsuit. Moreover, the Second Instance Court rejected the claim that the defendant had adopted a parasitic behavior of unfair practice given that based on the expert opinions in the fields of architecture, arts and marketing techniques, graphical design and testimonial evidence it was concluded that there was no indication at all that could lead to affirm that VICTORIA CREAM S.A. had taken distinctive elements from the plaintiff to apply them in a similar and slightly disguised manner in their corporate image.

New IP Regulations in Argentina

With the aim of promoting the de-bureaucratization and simplification of procedures, on January 11, 2018, Decree No. 27/2018 was published in the Official Gazette, through which amendments were made to the regulations concerning trademarks, patents/utility models, and designs.

While said decree is in force as of January 12, 2018, some of the articles are yet to be regulated.

Below you will find a link to the main changes that have been introduced by this decree.

Please do not hesitate to contact us should you have any query about this or any other matter.

Argentina Patent Office to change the order in which patent applications are examined

By means of Disposition No. 88/17, the National Patent Administration (ANP) has resolved that, as from the 1st of January of 2018, patent and utility model applications which Substantive Examination has not yet begun, will be examined chronologically based on their filing date.

The ANP has based this disposition on that the current methodology—in which patent and utility model applications are examined in the order in which their substantive examination was requested—goes against the transparency and celerity of the examination process.

Argentina PTO to increase Official Fees

Official fees for Trademarks, Patents and Designs are to be increased in two stages–in August and October 2017. The increase will be approximately 40% (on average) on most items, with higher increases (about 100%) for recording assignments and changes of name. On the other hand, the increase regarding annuities is expected to be lower (about 20%).

Furthermore, a new fee will be introduced corresponding to the voluntary accelerated examination of patent applications.

The new official fees have not been confirmed since the PTO is yet to release an official announcement regarding these increases.

Transfer and Intellectual Property Course – Patent Drafting

On May 18, Ayelén Barreto participated as an exhibitor in the Transfer and Intellectual Property Course organized by the Secretariat of Science and Technology at the University of Buenos Aires. Her class was based on the following topic: anatomy and drafting of a patent application.

Transfer and Intellectual Property Course – Fundamentals of the Patent System

Miguel Miranda participated as an exhibitor in the Transfer and Intellectual Property Course organized by the Secretariat of Science and Technology at the University of Buenos Aires.

The objective of the course is to ensure that the scientific and management community in all units of the University is able to manage the activities of transfer of knowledge, intellectual property and results from University to society.

In his class on April 27, 2017, Engineer Miranda explained very clearly and dynamically the fundamentals of the patent system, conducting an intrinsic analysis of patentability and the patenting process, and provided the attendants with strategies for the protection of inventions. In addition, he presented national and international statistical data on the subject matter, with particular emphasis on university patents.