Dear Colleagues,
The latest changes in the Trademark Law in 2019 established important modifications to the operation of the trademark nullity system.
We understand that staying updated on these matters is key to properly look after your trademarks or in case you wish to enter the Argentine market.
In this way, we’ve put together a document with FAQs on this matter which you may find below.
We remain at your disposal and hope these tips will come in handy!
FREQUENTLY ASKED QUESTIONS ABOUT TRADEMARK NULLITY IN ARGENTINA
1. What trademarks may be declared null and void?
Trademarks registered in violation of the provisions of the Argentine trademark law may be declared null and void.
For instance, those registered trademarks that do not have distinctive capacity, trademarks that are identical or similar to other trademarks previously petitioned for covering the same products or services, trademarks that encompass GIs and appellations of origin, trademarks that are likely to induce consumers to errors, trademarks contrary to morals and good customs, trademarks indicating the name, pseudonym or portrait of a person without their consent or that of their heirs up to the fourth degree inclusive, among others.
Other reasons include serious flaws that cannot be corrected, such as the lack of signature in the application or of legal capacity, lack of or error in the indication of goods or services, erroneous publication, or likelihood of confusion, etc.
2. Can a trademark application be nullified?
Only registered trademarks may be declared null and void by the Trademark Office. A trademark application pending registration cannot be nullified.
3. What are the requirements for filing a nullity action?
For a nullity action to proceed at the request of a party, the plaintiff must invoke the affectation of a subjective right or a legitimate interest and that the action is not prescribed.
4. What nullity actions must be filed directly before the courts?
The request to declare a trademark null and void due to bad faith, by someone who, when applying for registration, knew or should have known that it belonged to a third party, as well as against whoever requests the trademark for its commercialization, carrying out the registration of trademarks for sale as a habitual activity, are not dealt with by the Trademark Office. For these two specific situations, the nullity of the trademark is ruled by the national justice in federal civil and commercial matters. The action will be treated according to the rules of the ordinary process.
Judicial nullity due to bad faith would apply both against registered trademarks and trademark applications since it would not make sense to have to wait for the same to be granted to initiate the nullity.
5. When does the nullity action prescribe?
According to the Argentine trademark law, the nullity action prescribes after ten (10) years. However, when it comes to nullity due to bad faith, our jurisprudence has established that they do not prescribe.
6. Who has standing to file a nullity action?
Any person or entity may file a nullity action on the grounds of infringement of a subjective right or a legitimate interest.
In addition, the Trademark Office may request it ex officio in the event of detecting a serious non-remediable defect in the trademark registration procedure.
7. What requirements must the nullity action meet?
The nullity request must indicate:
a) Petitioner’s name and address.
b) Name and address of the owner of the registration.
c) The subjective right infringed (or the legitimate interest).
d) The trademark for which nullity is sought, the grounds for nullity, and supporting evidence thereof; and
e) Payment of the required fees must be made.
8. Can the Trademark Office reject a trademark nullity action?
The Trademark Office may reject a petition for trademark nullity that:
a) Does not comply with any one of the above-mentioned petitions requirements.
b) Has already been settled as to the same grounds for nullity.
c) Has been lodged and/or settled within Administrative Opposition Proceedings.
9. What are the steps in a trademark nullity process before the Trademark Office?
The nullity process can be an ancillary proceeding, or a matter dealt with within an opposition proceeding.
Ancillary proceeding:
Once the request for nullity has been submitted, the owner of the registered trademark will be notified, so that, within a period of fifteen (15) working days, they can answer and submit evidence.
When the nullity is initiated ex officio, the Trademark Office must invoke the serious non-remediable defect of the procedure on which it is based, which will be notified to the owner, for the same period, with the same purpose.
Once the notice has been answered or the term to do so has expired, the Trademark Office will decide on the merits of the evidence, the facts and grounds stated by the parties.
Within an opposition proceeding:
If the nullity action is initiated in the context of an opposition, it must be filed in parallel. The Trademark Office may deal with it in a single resolution, or issue two separate resolutions.
10. Can the resolutions of the Trademark Office be appealed?
All decisions made by the Trademark Office withing the nullity process may be challenged through a motion for reconsideration (10 working days) and/or an appeal before a higher administrative authority (15 working days). The final decision may be challenged through a motion for reconsideration or an appeal before a higher administrative authority, or a motion may be filed before the Federal Court of Appeals in Civil and Commercial Matters (30 working days) set forth by Section 24 of Law No. 22362, which shall be filed before the local TMO.
If a motion for reconsideration and/or an appeal is filed before a higher administrative authority and the original decision is upheld, the motion or appeal may later be filed before the Federal Court of Appeals in Civil and Commercial Matters.
Author: Diego Palacio
Applicable Laws:
- Trademark Act No. 22362, Section 24. (Section replaced by section 73 of Law No. 27444).
- Executive order 242/2019, Section 24. (Regulation Act 22362)
- Argentine Trademark and Patent Office Resolution 183/2018, annex III (incorporated by Resolution P279 / 2019, annex I).
