On January 10 2018 the president issued Decree 27/2018, with the aim of further reducing and simplifying the regulations of different regimes in order to improve commerce and industry (for further details please see "Effect of new decree on industrial property and trademark law").
In the IP sphere, the decree introduced amendments to the Trademark Law (22,362), the Patent Law (24,481) and the Industrial Models and Designs Decree (6673/63).
The decree introduced important and substantial changes to the trademark opposition system by substituting, for example, the previous text of Sections 14, 16 and 17 of the Trademark Law with the following:
"SECTION 14.- Oppositions to the registration of a trademark must be submitted electronically before the NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY, indicating name, real domicile, and email address of the opposing party and the grounds of opposition.
SECTION 16.- After the three (3)-month period counted as from the date of notice of oppositions according to section 15, should the Applicant fail to obtain the withdrawal of oppositions, the NATIONAL TRADEMARK DIRECTORATE shall resolve in administrative instance the oppositions that are still in effect.
SECTION 17.- The procedure to resolve the oppositions shall be established by the Application Authority, which shall consider at least the possibility of the opposing party to extend the grounds, the applicant's right to respond to the opposition, and the right of both parties to offer proof. The procedure shall accept the principles of procedural celerity, simplicity, and economy.
The resolutions regarding oppositions, issued by the NATIONAL TRADEMARK DIRECTORATE, shall only be directly appealed before the Federal Court of Appeals in Civil and Commercial Matters, within thirty (30) business days from notice. The appeal shall be brought before the NATIONAL INSTITUTE OF INDUSTRIAL PROPERTY, which shall forward it to the justice under the conditions established by the regulations."
Previously, Section 19 of the Trademark Law, which has now been abrogated by the decree, foresaw the possibility that parties could reject the judicial route by mutual agreement.
In such a situation, the National Institute of Industrial Property was empowered to issue a resolution — after hearing the parties and considering the evidence provided — which could not be appealed. The alternative to this administrative instance was rarely used.
As a consequence of the decree, the administrative authority will be empowered to settle disputes concerning oppositions that cannot be resolved between the parties by means of negotiation.
Other notable news regarding conflicts that arise from oppositions is that parties will no longer have access to a double judicial instance, as the party that wishes to appeal a decision will do so directly before the Federal Court of Appeals in Civil and Commercial Matters.
For further information on this topic please contact Daniel R Zuccherino at Obligado & Cia by telephone (+54 11 4114 1100) or email ([email protected]). The Obligado & Cia website can be accessed at www.obligado.com.
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