Registration of marksi Inherent registrability
Upon submission of the application, the Trademark Office issues a preliminary report, accepting (or refusing) the application for publication purposes. The application will be declared abandoned should there be a failure to file a timely response to formal objections. If the Trademark Office finds that the legal formalities have been complied with, it will publish the application for one day only in the Trademarks Bulletin.
Oppositions to the registration of a trademark must be filed at the Trademark Office within 30 working days of publication of the trademark. No extensions are available.ii Prior rights
Priority must be claimed by submitting a separate application form at the same time as filing the trademark application. A non-legalised certified copy of the priority document, with its public translation, must be filed too.iii Inter partes proceedings
Oppositions to the registration of a trademark must be filed at the Trademark Office within 30 working days of publication of the trademark in the Trademarks Bulletin.
The trademark applicant is given formal notice of any oppositions filed by third parties and of any official objections that may have been raised.
Hereafter, the trademark opposition procedure has suffered significant changes, according to the amendments to the opposition procedures established by Decree No. 27/2018, INPI Resolution P-183 and Law No. 27,444.
Under this procedure, which entered into force as of 18 September 2018, the applicant and the opponent have to reach an amicable settlement within three months as from the date on which the applicant has been notified of the opposition.
After this period, the Trademarks Office notifies those opponents who have not withdrawn their opposition to maintain the effect of the opposition to the trademark registration by ratifying the same and paying an additional fee within a non-extendable period of 15 working days, and, within that same period, to extend the grounds for their opposition with additional arguments for their purported right and offer the evidence they deem relevant. If an opposition is not maintained, it will be considered by the Trademarks Office as an informal objection, and the procedure of the trademark application will continue automatically.
Within 15 working days of the conclusion of the aforementioned period, and regardless of whether the opponents have expanded the grounds of their opposition, the Trademarks Office notifies the applicant of every opposition that is still effective and of any additional arguments, and the applicant is given a non-extendable period of 15 working days to individually reply to each opposition and provide the evidence the applicant deems appropriate.
The evidence filed by both parties is considered jointly and decided after this 15-day period by the Trademark Office. This time frame is not always complied with by the Trademark Office in view of the present backlog. Once the parties have been notified of this decision, they have 40 working days to submit their evidence regarding the oppositions.
Upon submission of the evidence or expiry of the submission period, and before the Trademark Office issues a decision on the appropriateness of the opposition, provided there are no previous procedural issues to be resolved, the parties are given a common period of 10 working days to submit a voluntary writ containing their final arguments.
Within this 10-day period, the parties may report that they have initiated a mediation or conciliation process, or an alternative method of conflict resolution, offering the necessary proof of this process. This report is submitted in the form of a joint writ and, if the parties agree to mediation or a similar process, the 10-day period is suspended for both parties for a period of 30 working days as of the submission of the joint writ.
Within this 30-day period the parties must finalise the agreed mediation, conciliation or alternative method of conflict resolution. After this 30-day period, a new 10-working day period automatically starts running, with the same effect and scope as the suspended one. If the parties have resolved the conflict by way of the chosen process, this is reported to the Trademark Office before expiry of the specified term, along with evidence of this result. If the parties resolve the dispute by way of the chosen process, the Trademark Office will not issue a decision on the dispute, given that the parties have already resolved the matter themselves. However, the parties' agreement will not bind the Trademark Office to a particular outcome in respect of the granting of the trademark application.
The parties are allowed to initiate a mediation or conciliation process, or an alternative method of conflict resolution, during all the opposition procedure. Nevertheless, this is the only moment when the parties can suspend the terms of said procedure, reporting it to the Trademark Office as explained above.
Upon expiry of the 10-day term, if the case has not been previously dismissed, the Trademark Office issues its decision regarding any oppositions to the trademark application that are still in effect, including stating whether these oppositions were well-founded.
To appeal the Trademark Office's final decision, a direct appeal must be made to the Trademark Office within 30 working days of the notification of the decision. The appeal must be accompanied by payment of the relevant administrative fees.
The Trademark Office will resolve in respect of the oppositions, and not in respect of the application itself. That is to say, the Trademarks Office may consider that the oppositions are ill-founded, and after that, when the procedure of the trademark application continues, deny the registration of this trademark application (i.e., citing an antecedent that its owner did not previously oppose).
The Trademark Office must then submit the filed appeal, together with a copy of the related proceedings, within 10 working days, to the opponent, and to the Civil and Commercial Federal Chamber of Appeals, which will make a decision regarding the opposition.
Once the matter of the opposition is agreed or otherwise finalised, the Trademark Office, where possible, decides, by way of a new administrative procedure, whether to grant or deny the trademark application.
If a decision granting registration is made, the corresponding certificate is issued to the applicant.iv Appeals
As mentioned above, to appeal the Trademark Office's final decision in an opposition procedure, a direct appeal must be made to the Trademark Office within 30 working days of the notification of the decision, and to the Civil and Commercial Federal Chamber of Appeals, which will make a decision regarding the opposition.
Decisions refusing registration are also subject to appeal to the Civil and Commercial Federal Chamber of Appeals. The appeal must be managed in accordance with the rules for ordinary proceedings and must be logged before the INPI within 30 working days of notification of the adverse decision.
If this action is not brought within the established period, the trademark application shall be declared abandoned.
According to the amendments to the non-use cancellation procedures established by Law No. 27,444, although the INPI is currently competent to declare the full or partial expiry of a trademark (in relation to products or services for which it has not been used in the country within the five years prior to the expiry, unless there are causes of force majeure), a resolution of a non-use cancellation action can be appealed to the National Chamber of Civil and Commercial Appeals within 30 business days of the notification of the INPI's resolution.
In respect of nullity procedures, also amended by Law No. 27,444, while the INPI is currently competent to declare the nullity of a trademark, this resolution can also be appealed to the National Chamber of Civil and Commercial Appeals within 30 business days of the notification of the INPI's resolution.