The Argentine Patent and Trademark Office (INPI) has approved new regulations governing administrative trademark opposition proceedings, introducing significant changes to the current procedure.
The main changes include the elimination of the separate evidence production stage, new rules for evidence from digital sources, and clarifications regarding the interaction between invalidity and non-use cancellation claims and opposition proceedings, as well as appeals against INPI decisions.
Below, we review the main changes.
How trademark opposition proceedings work in Argentina
When a trademark application receives an opposition, the applicant and the opponent initially have a three-month period to try to reach an agreement.
If the opposition has not been withdrawn by the end of this period, INPI notifies the opponent, who then has 15 business days to maintain the opposition by paying the corresponding official fee.
Within the same period, the opponent may extend the grounds for the opposition and submit the evidence it considers relevant.
Once this period expires, INPI notifies the applicant of any oppositions that remain in force. The applicant then has 15 business days to pay the official fee for the administrative resolution of the oppositions and, if it chooses to do so, to respond to them and submit evidence.
If the applicant fails to pay the official fee within the established period, the trademark application is rejected.
Elimination of the separate evidence stage
One of the most significant changes introduced by the new trademark opposition regulations is the elimination of the separate evidence production stage.
Until now, after the opponent extended the grounds for the opposition and the applicant filed its response, a separate 40-business-day period was opened exclusively for the production of evidence. Under the new procedure, this stage has been eliminated.
As a result:
- Documentary evidence must be submitted when the opponent extends the grounds for the opposition or when the applicant files its response, as applicable.
- As a general rule, any other evidence must also be produced and submitted at that same time, exclusively in documentary form.
- If, exceptionally, certain evidence cannot be produced and submitted in documentary form, the party must expressly state this in its filing. INPI will assess its admissibility when issuing its final decision.
This change is intended to streamline the procedure and requires both opponents and applicants to have the evidence necessary to support their positions ready from the outset.
New rules for digital evidence
The new regulations also establish more specific rules for evidence obtained from electronic sources.
When the parties rely on information available on websites, digital platforms, databases, social media, public registries or other electronic or digital sources, such sources must be publicly accessible. The parties must precisely identify the relevant links or electronic addresses and provide any access information required.
If INPI cannot access the links or electronic addresses provided, they will be disregarded.
When deciding the case, INPI may independently verify public registries (including its own records), websites, digital platforms, databases and other electronic sources identified by the parties.
Invalidity and non-use cancellation in the context of an opposition
The new regulations clarify that invalidity or non-use cancellation claims raised in the context of an opposition must be filed when the opponent extend the grounds for the opposition or when the applicant files its response, as applicable, without the need to serve the prior formal notice required for standalone proceedings.
That prior notice is not required, since the applicant and the opposing party are already linked through the opposition proceeding. This amendment complements the recently enacted new administrative procedure for trademark invalidity and non-use cancellation proceedings before INPI. (link)
If the grounds for invalidity or non-use cancellation arise after the opposition grounds have been extended or the response has been filed, the new regulations clarify that a separate action may be initiated and reported in the opposition proceedings before the deadline for filing final arguments.
The opposition proceedings will then be stayed until a final decision on the invalidity or non-use cancellation claim has been issued.
Changes to appeals against INPI decisions
Finally — although this was already the practice — the new regulations expressly establish that a direct appeal must be filed directly with the Federal Civil and Commercial Court of Appeals.
Within 20 business days after filing the appeal, the appellant must notify INPI by filing a mandatory affidavit and paying the corresponding official fee before INPI’s Legal Affairs Department. At the same time, an affidavit containing the same information must be filed in the trademark application record.
At Legal Core Group, we advise Argentine and foreign companies on trademark opposition proceedings before INPI, including opposition negotiations, responses, evidence and appeals before the Federal Civil and Commercial Court of Appeals.
For further information or advice on trademark opposition proceedings in Argentina, please contact us.
