The Argentine trademark system provides mechanisms to challenge registrations granted in violation of the law. Trademark nullity is an essential tool to protect the rights of legitimate holders and to ensure that trademark registrations comply with the principles of legality, good faith, and distinctiveness.
Legal Grounds for Nullity
Article 24 of Trademark Law No. 22,362 establishes the grounds on which a registered trademark may be declared null and void:
Section (a): When the registration was granted in violation of the provisions of the law.
Section (b): When the applicant knew or should have known that the mark belonged to a third party.
Section (c): When the registration was applied for commercialization purposes by a person who habitually engages in such activity.
Administrative Nullity Proceedings
Nullity actions based on Article 24, section (a), are resolved at the administrative level by the Argentine Trademark Office (TMO).
The nullities contemplated in this section refer to trademarks granted in violation of Articles 2 and 3 of the Trademark Law, which list the signs that cannot be registered as trademarks.
This procedure is governed by Resolution No. 279/2019. Its most relevant aspects include:
- Scope and Admissibility
Administrative nullity only applies to registered trademarks.
It may be initiated at the request of a party, when a subjective right is alleged to be affected, or ex officio, when a serious and incurable defect is detected in the registration process.
- Nullity in the Context of Oppositions
When nullity is raised in the context of an opposition to a trademark application, it will be resolved within the Administrative Opposition Resolution Procedure itself.
- Formal Requirements
A nullity petition must include:
- Information of the petitioner and the trademark owner.
- Identification of the challenged trademark.
- The subjective right allegedly affected.
- Factual and legal grounds, supported by evidence.
- Payment of the applicable fee.
- Proceedings and Trademark Owner’s Defense
Once nullity is initiated, the registered trademark owner has 15 business days to respond and submit evidence. After this stage, the TMO decides based on the facts, arguments, and evidence provided.
- Appeals
The administrative decision declaring or rejecting nullity may be appealed within 30 business days through a direct appeal before the Federal Civil and Commercial Court of Appeals.
Judicial Nullity Proceedings
When nullity is based on the grounds set forth in sections (b) and (c)—i.e., cases of bad-faith or speculative registrations—jurisdiction lies directly with the Federal Civil and Commercial Courts.
In such cases, the action must be filed directly before the courts, with sufficient evidence to prove bad faith and the violation of the legitimate holder’s rights. This lawsuit must be preceded by a mandatory mediation process.
Conclusion
Pursuing a nullity claim requires a sound evidentiary strategy and solid legal grounds, as both INPI and the courts apply a restrictive approach when assessing the admissibility of these actions. This is because a registered trademark constitutes an acquired right that, in principle, enjoys a presumption of validity.
Therefore, specialized legal advice is crucial to assess the merits of such actions, analyze the associated risks, and determine the appropriate course of action—administrative or judicial—for the protection of trademark rights.
Contact us to receive legal guidance.
