Argentine Trademark Office issues new resolution on trademark mid-term statements of use and trademark renewals

On May 27, 2019 the Argentine Trademark Office issued Resolution No. 123/2019 (the “Resolution”) clarifying the provisions of Regulatory Decree No. 242/19 of the recently amended Trademark Law (“New Trademark Law”). The Resolution refers to the new mid-term declarations of use and to the grant of a 6-month grace period for renewals, and also includes general interpretation provisions related to the terms for replying official actions.

Mid-term declarations of use: The New Trademark Law introduced the obligation to submit a sworn declaration of use with respect to trademarks that have been on the Register for 5 years, between year 5 and year 6 of the registration. The Regulatory Decree No. 242/19 established that the above mentioned period starts to run as of the enactment of the New Trademark Law (January 12, 2018).

The Trademark Office has now clarified that the obligation to submit such declaration of use will apply in respect of trademarks granted as of January 12, 2013, i.e., 5 years before the enactment of the amended Trademark Law. A special extension ending on January 12, 2020 has been given to comply with this obligation, which will apply to all cases which would otherwise already have expired or which would expire before that date.

In the event of late filing of the declaration of use, the Resolution establishes the obligation to pay an additional official fee for each year of non-compliance.

Renewal grace period: Trademark registrations may now be renewed 6 months prior to the renewal deadline and 6 months after the expiration of the renewal term.

The Trademark Office has also established that the renewal of trademarks granted on or after January 12, 2013 will not be prosecuted in cases where the mid-term declaration of use has not been submitted.

Terms and deadlines to respond to official actions: with the exception of the special terms applicable to the administrative opposition process, the terms to file a reply to an official action or for filing an appeal against a decision issued by the Trademark Office will be of 30 days counted as from the publication of the decision in the Trademark Bulletin. Additional 10-day and a final 5-day extension will be available through the payment of an official fee.

 

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This newsletter is intended to provide readers with basic information concerning issues of general interest. It does not purport to be comprehensive or to render legal advice. For advice about particular facts and legal issues, the reader should consult legal counsel.