Amendments to Trademark Law regulations

On November 26, 2003 the Argentine Government issued Decree No 1141/03 (the “Decree”), modifying Decree No 558/81 of March 24, 1981, which regulates Trademark Law No 22,362. The purpose of the modification is to modernize certain operative aspects of trademark prosecution. The main instrument provided by the Decree to accelerate trademark prosecution, is the authorization given to the National Institute of Industrial Property (“INPI”), enabling notification of official actions and other decisions in trademark applications through the publication of such actions or decisions in the Trademark Gazette (“Boletín de Marcas”).

This Gazette is prepared and edited on a weekly basis within INPI and is provided to interested parties in digital format or on paper, as required. Until now, the Trademark Gazette mainly included publication of applications for new trademarks, renewals, and cancellation of trademarks issued by federal courts. In the future, publication will also include administrative decisions of abandonment, lapsing and cancellation as well as any other action within prosecution of a trademark which INPI may further decide to notify through this new means.

Traditionally, notification occurred almost exclusively by viewing the file in person or have a government official take copies of the corresponding briefs to the address for service given in the application. Of particular importance is the fact that a trademark applicant will be alerted through publication in the Trademark Gazette regarding the existence of third party oppositions or official actions. Upon publication, a 60 day term is given, to perfect notification by attendance at the INPI, and to obtain copies of such oppositions or actions. The usual terms stipulated in Trademark Law No 22,362 to resolve third party oppositions (one year) or to respond to official actions (90 days) will in the future be counted as from expiration of the said 60 day term. It is expected that INPI will apply this aspect of the Decree quickly, in order to expedite prosecution of numerous applications, which are pending notification.

The Decree also allows INPI to review and update the classification of products and services, in order to adopt successive modifications, which may be introduced by the World Intellectual Property Organization (WIPO). Currently, the 8th edition of the Nice Classification is in force in Argentina.

INPI is also authorized by the Decree to receive filings in facilities specially set up for such purpose, other than the main building or the post offices. For the time being, there will be no practical changes regarding this matter, but it is possible that in the near future, applications may be filed in such facilities within the provinces of Argentina.

The Decree provides a term of 40 working days, in order for the applicant’s attorney to attest that he/she is in possession of a power of attorney in those cases where such power was not submitted initially. This term normally shortens the traditional 60 calendar day term and is equivalent to the term provided by the Argentine Civil and Commercial Procedural Code and recent administrative practice of INPI.

Finally, the Decree refers to the existence of the profession of Industrial Property Agent, which is regulated by an old decree from 1932. In this regard, it maintains the system of Decree No 558/81 inasmuch such professionals are allowed to attest under oath as to the existence of a power of attorney rather than submit the document, unless specifically required to do so. The new Decree further enables INPI to dictate the conditions, rights and obligations to which such profession will be subject.

It is still too early to fully say what practical effects this new decree will have, but there are high hopes that the new tools will be beneficial to expedite examination of trademark applications.