The government recently issued Decree 27/2018 (ratified by Law 27,444), which introduced substantial changes to the trademark opposition system, empowering the National Institute of Industrial Property (INPI) to settle disputes concerning oppositions that cannot be resolved by the parties through negotiation.
The new procedure for the settlement of oppositions has been regulated by Resolution P-183/2018, which will come into effect 60 calendar days after its publication in the Official Gazette on July 19 2018.
The new procedure's main provisions are as follows:
- A three-month term to obtain the withdrawal of oppositions has been established. On the expiration of this term, the party that wishes to maintain the opposition must pay a fee and can broaden the grounds of opposition and submit any evidence deemed relevant.
- Documents for the administrative procedure to settle oppositions shall count with the support of a legal counsel or industrial property agent.
- The applicant will be notified of any oppositions in force and must respond to each case individually and submit the evidence that it considers relevant.
- An evidence period (a maximum of 40 calendar days) has been established.
- Once the evidence has been submitted or is due, final arguments must be submitted within 10 business days, during which the parties may – by mutual agreement – start a process of mediation, conciliation or another alternative method for the settlement of disputes.
- The INPI's final decision regarding a trademark opposition can be appealed before the Federal Court in Civil and Commercial Matters.
- If any party poses the lapse of registration or nullity of a trademark relating to the opposition, the parties must bring this before the competent judicial authority, until the INPI regulates the procedure to resolve the lapse of registrations and nullities.
For further information on this topic please contact Daniel R Zuccherino at Obligado & Cia by telephone (+54 11 4114 1100) or email (firstname.lastname@example.org). The Obligado & Cia website can be accessed at www.obligado.com.
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