Guest Author: Carlos V. Castrillo
On Thursday January 11, 2018, Mauricio Macri, Argentina’s President, issued an Emergency Decree (with almost 200 articles) with the purpose of simplifying numerous administrative procedures before the National Administration.
An Emergency Decree is a piece of legislation that should be issued as a law by the Congress, but in view of special circumstances the Constitution authorizes the President to become a legislator, as long as a Congress does not veto the Decree in the following term which begins on March 1st.
There are a lot of proposed law modifications in the Decree, aiming at simplifying bureaucracy in the different Administrative Agencies of the Executive, in between which, we find the Trademark and Patent Office which will be the focus of this article.
The changes for the trademarks procedure are as follows:
- Oppositions should be filed electronically. Up to date one could file them manually at the Trademark Office or electronically through the Trademark Office (TMO) webpage.
- There will be a reduction from twelve to three months in the cooling off period in which to negotiate the withdrawal of the opposition of the application.
- If the opposition is still standing, the Trademark Office will take a decision and there will be no mandatory mediation or a court procedure with all the extra costs and time that these steps meant.
- Since the administrative process should emulate a Court proceeding, in less time and with less costs, the final details of the procedure are still to be set that should guarantee an opportunity to be heard and provide evidence for both parties.
- Both parties would have the opportunity to appeal the TMO decision with a 30 day deadline after being notified of it, therefore the guarantee of an independent judicial decision is maintained.
- The TMO will also decide on any question regarding trademark cancellation for lack of use and nullity.
- The sufficient proof of use needed to keep the registration will be changed from any article or service (as it is now) to articles or services duly related between them, therefore, cancellations can be partial for some goods or services if the trademark is not used for all the goods/services in the registration.
- 5 years after the registration of a trademark and before a one-year deadline, the owner must file a sworn declaration describing the use of the trademark.
- According to the Decree, the TMO is given the competence to change any procedure if the change is needed to speed up the granting of trademarks and its costs. This could be one or more of the following:
- Abolishment of relative grounds refusals;
- Acceptance of multiclass filings;
- Granting of a trademark on a preliminary basis before publication, i.e. pre-grant before opposition.
In the Patent field, we find three important proposed modifications:
- Priority documents or its assignments were to be filed in a 90 day term after the filing otherwise the priority would be lost. Now there is no deadline and the Patent Office may ask for the documents when examining the Patent application.
- The examination fee has to be paid in an 18-month deadline from the filing date compared to the 36-month period now effective.
- Power of attorney documents can be replaced by a sworn declaration of the Patent Attorney, and the Patent Office may require its filing at any point.
In the field of Design Patents, the most significant changes are that it will not be possible to file multiple designs in the same application and that photographs and electronic reproductions of the design will be accepted without any mandatory description.
There are many changes in the Emergency Decree that are very welcome, and the changes will remove some of the strange fundamentals that we are used to in Argentina. It will hopefully bring the Argentine trademark procedure more in tune with the rest of the world.
A great step forward seems to have been taken, although we still need to wait for the final outcome….
About the Author:
Carlos V. Castrillo is Founder and Managing Partner at Castrillo & Castrillo. Founded in 1998, Castrillo & Castrillo is a boutique law firm specialized in IP (trademarks, patent, copyrights and related rights) servicing local and international companies and organizations. We provide legal counsel on IP issues to clients doing business all around the world. Carlos is an Intellectual Property Specialist with 30 years of professional experience.
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