New Invalidation And Non-Use Cancellation Procedures

Author:Ms Alejandra Camacho Luna
Profession:Fross Zelnick Lehrman & Zissu, PC
 
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We recently discussed amendments to the Argentinean trademark law here. Subsequently, on October 8, 2019, the Argentine National Institute of Industrial Property (INAP) issued Resolution No. 279/2019 and corresponding annexes, which introduce new procedures for invalidation and non-use cancellation actions, and relevant fees.

The main impact of INAP's Resolution is that invalidation and non-use cancellation actions may now be decided by INAP, and need no longer be filed before a court. However, appeals of INAP's decisions must still be brought before the judicial courts. However, if an applicant raises either an invalidity or non-use cancellation motion against a registration that has been asserted in an opposition proceeding, these actions will be decided by the same entity that decides the opposition, namely the Administrative Resolution Proceed of Oppositions (ARPO), rather than the NTD.

The requirements for initiating invalidation and non-use cancellation actions are the same: The plaintiff must (i) provide its name and address, and the name and address of the trademark owner; (ii) identify the plaintiff's and defendant's rights; and (iiii) pay the required fees. Failure to comply with these requirements will result in a refusal.

  1. Invalidity Actions Invalidity actions are available to challenge trademark registrationsnot applicationseither ex officio or at the request of a party. The ex officio invalidations shall only proceed against "irremediable serious violations" detected in the trademark proceeding, which requires a high threshold of proof. The National Trademark Department (NTD), an INAP department, should notify the registrant of the ex officio invalidation. The registrant then has the right to file a response brief. The NTD will issue...

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