From 12 June 2023, partial trademark cancellation actions for lack of use will be possible in Argentina. This is a significant change for rights holders, and will have a notable impact on trademark strategies.
Almost five years ago Argentina’s new Trademark Act introduced the possibility of filing a partial cancellation action against a mark. Now that the five-year grace period is almost over the Trademark and Patent Office will have to start accepting and resolving partial cancellations in lack of use cases.
A partial cancellation request seeks to partially cancel a trademark that has not been used in relation to certain goods or services within the five-year period preceding the request. The registration will remain in force for those goods or services not included in the cancellation request, and a petition for cancellation may be filed both against new trademarks and renewals.
This is a significant change. Historically in Argentina, trademark owners would possess ‘defensive trademarks’, those marks being registered in other classes not in use and not necessarily related to the core classes used by the business. This was accepted practice because the use requirement was fulfilled if the mark was used for any product or service whatsoever, in any of the cited classes. The result was that many companies registered their trademark in all 45 classes or several, even though they only used it for a single product.
Argentina does provide extra protection for well-known trademarks under the Paris Convention and TRIPS (ADPIC in Spanish). However, this status must be declared by a federal judge in a specific case. This, as you may imagine, is hard to achieve and expensive (in Brazil, our neighbor and soccer rivals, the trademark office can declare well-known trademark status. This too is not easy to obtain but does give protection in all non-registered classes for ten years. I mention this so our authorities take note as it is a better way to deal with this special kind of status).
Thus these ‘defensive trademarks’ seemed fair and reasonable as an additional protection for well-known trademarks. However, they were unfair when secured by those which were not well-known. In some extreme cases, companies that were coexisting in other countries due to the different nature of their core businesses found that, in Argentina, they faced unsurmountable obstacles as the other company had protection in all classes. There have been some companies that could not enter the Argentine market because of this, or alternatively had to use an alternative brand.
These defensive trademarks will soon be subject to cancellation actions, at the end of which they will remain in force only for the products sold or services provided (and those related or similar to them) – or, where used as a commercial or activity designation, only in relation to the products or services related or similar to it. The one exception will be instances where non-use of the trademark was due to force majeure.
The main – and essential – element in a cancellation action is the proof of use/non-use. The burden of proof rests mostly on the owner of the challenged trademark since it is a question of positive facts: to demonstrate that there is or was use.
It is therefore important to gather and keep evidence of trademark use, at least once a year, in relation to as many goods and services as possible. It is also advisable to keep copies of any trademark advertising released. In addition, it is vitally important that all evidence of use is dated, reliable and verifiable.
Additionally, in Argentina using the distinctive or substantial part or elements of a mark would be enough to repel a cancellation action for lack of use according to case law. Accordingly, if a company owns a registered design mark, but has been using an updated and slightly different version during the last five years, defense would still be possible. Notwithstanding the foregoing, it is always recommended to file the updated design for protection and refrain from renewing the old one.
In cases where the trademark has not been used in Argentina, and the trademark owner or licensee is not ready to commence use, the best current way to strengthen the rights would be to obtain a slightly different trademark before exposure to a cancellation action. For each trademark in force that you want to challenge for non-use during the last five years, you have to file separate actions before the office. Therefore, the more trademark registrations you have, the more expensive it would be for the challenger. Although this strategy is not bullet-proof, it is still the best alternative available in Argentina.
It is important to also note that a final decision may be challenged through a motion for reconsideration or an appeal before a higher administrative authority. If a motion for reconsideration and/or an appeal is filed before a higher administrative authority and the original decision is upheld, the motion or appeal may later be filed before the Federal Court of Appeals in Civil and Commercial Matters.
In conclusion, the new partial trademark cancellation for lack of use proceeding in Argentina highlights the importance of using and protecting trademarks. This new legal remedy will give businesses a powerful tool to cancel unused marks as they seek to enter the Argentinean market, but there are alternative strategies to protect trademarks, such as licensing, using the mark in connection with related goods or services, registering slightly different trademarks, etc. By taking proactive steps to protect their trademarks, businesses can ensure that their IP rights are secured, and their brand remains valuable.
