The Defense of a Registered Trademark trough the opposition action in Argentina. A useless remedy for the applicant. When justice delayed is justice denied. A reformulation to the opposition procedure?

carlos-pulcha

 

Carlos Pulcha Guerra

Lawyer

 

 

 

 

 

If a holder of a registered trademark detects that, a similar sign appeared on the Official Gazette within the 30 days after the publication, the Argentinean IP law permits the filing of an opposition action to prevent the granting of a similar sign. Although the IP law only refers that in order to file an opposition action a legitimate interest is required, it does not establish the minimum requirements to support the filing of such action.

One of the issues of the lack of fulfillment of certain requirements is that the filing of the opposition action makes that the whole procedure stops the trademark application, no matter what arguments were cited by the opposite party.

Normally, in a non-contentious procedure, the Intellectual Property National Institute (INPI) after the publication period has expired starts the analysis phase and then issue a granting or denial resolution. However, things are different when the trademark applications becomes into a contentious procedure because of an opposition action. After the process suspension, the Argentinean normal practice refers us that the applicant should contact the opposite party to reach an arrangement through an extrajudicial agreement to obtain the withdrawal of the opposition. The opposite party can demand the applicant to limit the application to avoid the likelihood of confusion between the requested trademark and the registered one. An agreement should be reached within the term of one year after the INPI’s notice to the applicant informing that an opposition action was filed.

If parties do not reach an understanding, the application is declared as abandoned, unless the applicant files a judicial action against the opposite party. It Is unclear why the IP Law follows this complex path, nevertheless until this point, both parties have lost at least one and a half year with no possible solution in sight. Many critics can be performed to this type of administrative procedure, where the administrative authority (INPI) has no real participation on a trademark application process; however, Argentina is the second country in South America with more trademark applications filed (65,931 in 2015) than other countries with a more expedite process like Peru (26,354) or Colombia (43,730) in the same year.

After the applicant’s has decided to follow the judicial phase, an action against the opposite party should be filed. This action is filed before the INPI, which remit the file to the ordinary court (Civil and Commercial Court). Before the judicial decision, a prejudicial mediation is mandatory for both parties in order to avoid the judicial process. If the trademark’s applicant reach an understanding with the opposite party in the mediation stage, the parties and the mediator sign a record. This document should be filed to the INPI to demonstrate that the applicant has obtained the removal of the opposition action.

In case parties does not reach an agreement in the mediation stage, they can initiate the judicial process, which will take at least 18 months to decide the removal of the opposition.

Considering all the terms and phases previously described since the filing application to the Court’s decision, the duration of the trademark registration process can take at least. Even when the more affected party is the applicant, because the opposite party will avoid the registration of the trademark for a long period if is not willing to reach an agreement, this kind of procedures makes more difficult the correct administration of justice by the competent authority. The Judicial Courts are not specialized entities in IP matters to solve a case, so it is an absurd to prevent INPI to decide the cases that are under its competence.

In our opinion, a modification to the trademark procedure in Argentina is a necessity. The increment of workload, the undue use of the opposition actions to prevent the registration of a trademark, the delay to obtain a decision are enough reasons to reformulate this procedure. The majority of the Trademark Offices in the region solve not only the non-contentious cases, but also the oppositions and nullity actions. Extrajudicial agreements and mediation process do not follow exactly the same guidance to solve a case; the main objective there is to reach an understanding between the parties to withdraw the opposition and to limit the trademark application, a right analysis is never performed. This method limits the possibility to create legal precedents and jurisprudence by comparing the prior resolutions that decided an opposition case. Argentina has to change its IP Law in order to gain more certainty to the registration procedures.

March 1, 2017 / Trademarks