New opposition system in Argentina

On July 12, 2018, the Argentine PTO passed resolution P-183 , establishing a new opposition proceeding as to trademark applications in accordance with Law No. 27,444, resolution which brought about two substantial changes:

  1. It establishes an administrative proceeding instead of the previous one in which the matter was judicially settled.
  2. The burden of urging the proceedings now falls on the opponent;  before,  it was the applicant who was obliged to act.

Now the opposition proceeding, broadly speaking, is as follows:

1)  Once the opposition is notified, the parties will have a three-month period to seek an amicable solution to the conflict. Before, we were given a one-year period.

2)  Should the three-month period expire without the parties having reached an agreement, the Argentine PTO will notify the opponent so that, within a period of 15 business days, they pay a fee of ARS 8,500.00 (equivalent to USD 320). At this stage, we should also expand the grounds as to the opposition and offer relevant evidence . Failure to pay said fee will cause the opposition to be disregarded and it will only be considered by the Trademark Office as a precedent to take into account when analysing the opposed application.

3)  When the fee has been paid and the 15-day period has expired, the Argentine PTO will notify the applicant that the opposition remains in force as well as of any changes in relation to its grounds, so that, within 15 working days, they file their answer and offer the evidence they deem necessary.

4)  In both cases, the aforementioned writs must be accompanied by documentary and instrumental evidence. Any other evidence offered, if accepted by the local PTO, must be produced within a period of 40 working days,  term which applies to both parties.

5)  As soon as the evidence period has expired, the Argentine PTO will notify the parties, giving them a period of 10 working days to file the final arguments, should they deem it necessary.

6)  At this stage, the parties may inform the PTO  that they have agreed to submit the case to a mediation, conciliation or any other alternative method of dispute resolution. This notice will suspend the process for 30 business days.

7)  Should the 10-day or 30-day term expire without an agreement being reached, the local PTO will decide on  whether the opposition is founded or not.

8)  The decision of the PTO will be appealable before the Federal Court of Appeals in Civil and Commercial Matters of the City of Buenos Aires, within 30 working days as from the date in which the decision was notified.

This resolution will enter into effect as of September 16, 2018 but, in practice, all pending opposition proceedings must be adapted to this new process.