Publications and Newsletters

OPPOSITION SYSTEM IN ARGENTINA



By means of this brief summary, we will try to introduce the main aspects of the opposition regime in Argentina, its characteristics and differences with other legal systems. The purpose of same is to provide some clarification over a system, which is not always completely understood.

As you know, the opposition system in Argentina is substantially different from that applied in most countries, in which the opponent and the applicant submit their grounds before the Trademark Office and the latter issues its decision in favour of one of the parties.

In our country, on the contrary, the Trademark Law considers that the opposition is a conflict between the parties and, therefore, the Trademark Office has no authority over this subject, although, in some cases which will be presented herein below, maintains the right to review a given situation.

Once an opposition is filed against a trademark application, the Trademark Office notifies of same to the applicant and grants one-year term to obtain the withdrawal of said opposition or to resort to the Federal Courts so that the latter may decide that said opposition is unfounded.

Nevertheless, the withdrawal of the opposition is generally obtained by means of an amicable agreement reached with the opponent, which agreement results from preliminary negotiations carried out between the parties. These agreements may be of diverse nature, though in most cases, they are reached through a limitation in the scope of the protection, the exclusion of any product or service, a commitment of use of the trademark in a certain manner, among others.

The achievement of these agreements may be reached either by means of a voluntary negotiation between the parties or else by a mediation process; this process will be dealt with herein below.

The point is that before the one-year term is due, the applicant must submit before the Trademark Office evidence that an agreement has been reached with the opponent which enables the registration of the trademark or else that the conflict has been submitted to a court of law. If none of these alternatives is presented, the Trademark Office declares the abandonment of the application.

In the first case, that is when the applicant evidences that an agreement with the opponent was reached, usually after that the trademark is to be granted. However, we have to point out that the Trademark Office is not compelled to accept private agreements and may even reject them and deny the grant of the trademark whenever it considers that those are in breach of the law or against public interest.

In the lack of any agreement with the opponent, as stated above, the only alternative available to the applicant is to file a legal action before a Federal court, to seek that the opposition be declared unfounded.

In order to resort to any judicial action, the applicant must previously comply with a mandatory mediation proceeding, which shall have been finished before the one-year term stated herein above so as to be in condition to initiate the legal action or else submit the agreement before the Trademark Office within the granted term

FREQUENTLY ASKED QUESTIONS.

Is there any possibility to postpone the term to file oppositions?
No. Once the trademark application is published in the corresponding Bulletin, the law grants a 30-day term to file oppositions, and said term cannot be extended.

Is it necessary to offer evidence with the opposition-filing writ?
It can be done but it is not strictly necessary and, in fact, evidence is offered in very few cases.
In order to file any opposition, it is sufficient to present the grounds on which said objection is based. Evidence shall be required when the conflict must have to be decided through a legal action. It will also turn out useful during the negotiations between the parties but this depends on each particular case.

Can grounds be widened/amended once the opposition is filed?
Yes. Grounds for the objection may be amended/widened both at administrative as well as at judicial stages.

Can the one-year term to obtain the withdrawal of the opposition or to resort to a judicial action be extended?
No. Said term cannot be postponed. The one-year term is neither suspended nor interrupted in the event the mandatory mediation process is started.

Is it mandatory to carry out preliminary negotiations or is it possible to directly revert to court?
Negotiations are maintained exclusively taken into account the trademark owner’s benefit; consequently in the event it is foreseen that said negotiations shall not render any satisfactory result, anyone may directly resort to the mediation proceeding.
In fact, in many cases where the opponent is evidently not willing to negotiate, we consider it convenient to start the mediation proceeding as soon as possible, so as to seek pressure and to avoid an unnecessary delay.

Is it necessary to wait for the Trademark Office to notify the opposition to start negotiations with the opponent?
No. Since negotiations are carried out between the parties directly, it is possible to start same with the opponent without waiting for any official notification, which generally takes some months.

Is it necessary to wait for the complete one-year term to resort to court?
No. In the light of the answer given in the previous paragraph, it is up to the trademark applicant to decide when a fruitless negotiation must be ended.

What happens if the opponent does not attend a mediation hearing?
If the opponent fails to attend, the opposition continues. However, the mediator draws a record evidencing the compliance on the part of the trademark applicant and, hence, the latter is in condition to resort to court.

Is the Trademark Office compelled to accept any agreement reached by the parties?
The Trademark Office does not intervene in the mentioned process but has the right to review the agreements made between the parties. Said Office is obliged to take care of public interest and, therefore, it may happen that it does not accept coexistence agreements whenever trademarks are similar and this may lead to confusion to consumers. It is worth mentioning that any refusal from the Trademark Office may be appealed, though this issue exceeds the scope of this summary.

PALACIO & ASOCIADOS