Kat friend Carlos Castrillo explains for Kat readers the operative measures that are being put into place for various IP matters in Argentina following the Emergency Decree that was made public on 11 January 2018 and which promise a new era in IP practice.
Oppositions must be filed electronically. Until now, an application could be filed either manually or electronically via the IP Office webpage.
There is a reduction, from twelve to three months, in the cooling-off period in which to negotiate the withdrawal of an opposition. If no withdrawal occurs, the IP Office will take a decision and there will be no mandatory mediation or court procedure (together with the costs and time that these steps entail). The trademark office has already begun issuing notifications with the three-month deadline.
A newly constituted administrative hearing is meant to emulate aspects of a court proceeding, but to be completed in less time and at a lower cost. If no amicable settlement is reached, the IP Office will first require the opponent to pay a fee of approximately USD $300. At the same time, the opponent will have the opportunity to file new arguments or expand on the ones already mentioned in the opposition as well as to submit additional evidence. The IPO Office will take a decision on the opposition.
Both parties will have the opportunity to appeal the IP Office decision to the competent court within 30 days from being notified of the decision. The details of the court procedure will be set in the near future.
While the IP Office will now be able to handle oppositions, it has not been given the authority to rule on cancellation matters. These should still be brought before the courts. Cancellation actions are typically initiated as a counter-claim to an opposition. The IP Office will suspend its proceedings until the Court decides on the cancellation request.
Partial cancellations will now be possible.
The proprietor of a registered mark must file a sworn declaration of use between the fifth and sixth year after registration, describing the use of the trademark.
The IP Office is given the competency to change any procedure if deemed necessary to accelerate the granting of trademarks and to reduce costs. The following have been mentioned as steps that might be taken:
Abolishment of refusals based on relative grounds;
Introduction of multiclass filings;
Grant of a trademark on a preliminary basis before publication, i.e. pre-grant before opposition.
Priority documents need to be filed within a 90-day period after filing, otherwise the priority will be lost. Previously, there was no deadline and the IP Office might ask for the documents even at the examination stage.
The examination fee has to be paid within an 18-month deadline from the filing date, compared to the previous 36-month period. Power of attorney documents can be replaced by a sworn declaration by the Patent Attorney. It will only need to be filed if the IP Office requests it.
It will be possible to file multiple designs in the same application if the designs are related to the same class. If not, divisional applications may be filed, which will enjoy the original filing date.
Photographs and electronic reproductions of the design will be accepted without the need for a written description, which was previously required.
Renewals may be filed in the 6 months before renewal and, as well, in the 6 months after the renewal date, upon the payment of an additional fee of approximately USD $78. The change will be valuable to owners, since in the old regime, renewals could be made only six months before the deadline, which meant that no renewal was accepted if less than sixth months remained or if the deadline had already passed.
These changes portend a sea-change in the way that IP will be practiced in Argentina, with the hope that they will make the country a more attractive venue for foreign owners of IP rights.