A Look at the Decisions Handed Down in the New Opposition and Cancellation Proceedings in Argentina

The Argentine Trademark Office has handed down 49 decisions in administrative opposition proceedings, which can be divided into three groups based on their dates of issuance and notification: those of  January 8, 2020 and notified on February 5, 2020; those of February 14, 2020 and notified on March 18, 2020; and those of May 21, 2020 and notified on May 27, 2020.

So far, no decisions have been handed down in the new proceedings for the cancellation of trademarks based on absolute grounds and non-use.

In 66% of the decisions, the Trademarks Office held that the oppositions filed had merit. 

Regarding the participation of the applicants in the opposition proceedings, in just one out of the 49 cases decided to date the applicant answered the opposition, which is a very low percentage if we consider the number of ratified oppositions that the Trademark Office will have to decide without the applicant’s intervention.

As for the types of evidence accepted by the Trademark Office, in every case it was limited to the documentary evidence and the electronic verification conducted by the Trademark Office. The rest of the evidence offered by the parties in the proceedings has been rejected or found inadmissible.

Everything seems to indicate that the Trademark Office will keep on accepting and rejecting the same types of evidence. Therefore, it will be interesting to know what the position of the Federal Court of Appeals on Civil and Commercial Matters will be when the parties motion for the reconsideration of rejected evidence at the time of filing the direct appeal against the decisions on the merits by the Trademark Office.

Pleadings with final arguments were filed in only half of the decided cases.

In spite of the initial fear of how the Trademark Office would decide on the oppositions, we believe that we are off to a very auspicious start.

The Trademark Office examiners have followed the rich jurisprudence and vast caselaw of the Federal Courts of Appeals on Civil and Commercial Matters, and have cited relevant court decisions on different matters, such as: the guidelines to be followed when comparing trademarks, the importance of etymological considerations, trademarks registered for defense purposes, well-known trademarks, direct and indirect confusion, special circumstances of the case, legitimate interest, the principle that oppositions must be based on trademarks registered in the same class as that of the opposed application and its exceptions, de facto trademarks, the applicant’s bad faith and the inexistence of miraculous coincidences, to name a few.

In any case, to date, the Trademark Office has only decided on the merits of relatively simple oppositions, based on registered local trademarks —which, in most cases, were even in the same class as the opposing mark.

Considering that statutes of limitations in all the proceedings before the Trademark Office have been stayed since March 12, 2020,  we believe that no direct appeals have been filed so far, so no decision is yet final.

During the recent Annual Conference organized by the Argentine Association of Industrial Property Agents (Asociación Argentina de Agentes de la Propiedad Industrial), the Trademark Office’s authorities reported that they had a significant number of signed resolutions, which we believe will be served soon.