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Due to the importance of trademarks for the development of businesses, it is of utmost importance to preserve their distinctive capacity, avoiding the appearance of confusing TMs that induce the consumer public to error, dilution of their distinctive capacity and, therefore, their value.
To this end, the watch service we offer in Palacio & Asociados is vital, controlling the publication of any trademark application, aiming to detect any request that is similarly confusing to that of our clients, enabling them to file an opposition in defense of their interests.
On July 12, 2018, the local PTO (INPI) issued resolution P-183, establishing a new process for oppositions in the trademark application process in accordance with Law No. 27.444, which brought about two substantial changes:
1. It establishes an administrative procedure replacing the previous one by which the court had to rule a decision
2. It shifts the burden of urging the process to the opponent, whereas in the past it was the applicant who was obliged to act.
The Law recognizes to any person with a “legitimate interest” the right to oppose to the registration of a trademark, which must be made in writing before the Trademark Office and within 30 days of publishing the application.
Once the opposition is filed in a timely manner, the registration process is interrupted and the Trademark Office notifies both parties, through a publication in the Official Bulletin, granting them a period of 3 months to negotiate a friendly settlement of the conflict.
Various types of agreements can be reached, although in most cases they are achieved through a limitation in the scope of protection, the exclusion of some product or service, commitment to use the trademark in a certain way, etc.
Upon expiration of the 3-month period without the parties having reached an agreement, the Trademark Office will notify the opponent, so that within 15 business days they file or expand the grounds of the opposition, offer proof and pay an additional official fee to ratify the opposition. Failure to pay the aforementioned fee will cause the opposition to fall and will be considered by the Trademark Office as a precedent to be taken into account when analyzing the application.
Once the fee has been paid and the 15-day term has expired, the Trademark Office will notify the applicant of the trademark that the opposition is in force and that the grounds have been filed, so that within 15 working days they present their defense and offer the evidence they deem necessary.
A recent Resolution (P-295/2024 published on July 23, 2024) established a new fee at this stage of the opposition process. Now, applicants for new trademarks must pay this fee within 15 business days (only once per application) from the official notification of ratified oppositions. Failure to make the payment within the specified period will result in the rejection of the application.
In both cases, the documentary and instrumental evidence must be filed along with the aforementioned writs. The remaining offered evidence, if accepted by the Trademark Office, must be produced within a period of 40 business days, period which is common to both parties.
Once the proof period expires, the Trademark Office will inform the parties giving them a common period of 10 business days to file the final arguments.
After the 10-business-day period has expired, the Trademark Office will decide whether the opposition is founded or not.
The ruling of the Trademark Office will be appealable before the Federal Civil and Commercial Court of Appeals of the Federal Capital, within 30 business days of being notified.