Argentine Trademark Office – INPI Resolution No. 295/2024: Key issues to consider one month after its entry into force
By Paula Galván
On July 23, 2024, the National Institute of Industrial Property (INPI) issued Resolution No. 295/2024, which amends the opposition procedure established in INPI Resolution No. P-183/18. Essentially, this new Resolution has two main objectives: i) to reduce the significant backlog in the resolution of oppositions that have already been ratified by opponents; and ii) to focus INPI’s resources exclusively on cases where both the applicant and the opponent are interested in having the opposition resolved by the INPI.
Before delving into the specific considerations of this new Resolution, just one month after its entry into force, it is worth recalling that INPI Resolution No. P-183/18, which has now been slightly modified, is a product of the reforms introduced by Law No. 27.444 (Simplification and De-Bureaucratization of Administrative Procedures) and its Regulatory Decree No. 242/2019. The purpose of this legislation was to reduce timeframes and simplify administrative processes, such as the handling of new trademark applications facing opposition from third parties, which must be resolved in the absence of a private agreement between the parties.
The goal of these modifications that began in 2018 was not only to shorten the processing time of opposition procedures but also to remove these cases from the judicial realm and include them within the administrative scope of the INPI, aligning with practices in other countries, especially in the region. The INPI, as the most competent body for resolving conflicts of potential coexistence between two trademarks in Argentina, would be responsible for issuing a first-instance decision, which could then be appealed in court. However, reducing the processing time of opposition procedures has proven to be quite a challenge: currently, there are thousands of trademark files that have received an opposition, which was ratified by the opponent at least 4 years ago, and are still awaiting a resolution from the INPI.
A key point in understanding the rationale behind the new Resolution No. 295/2024 is that the previous Resolution No. P-183/18, while granting the applicant the right to be heard, did not require them to participate in the opposition resolution process, and such inactivity did not result in any adverse consequences. On the other hand, an opponent seeking to prevent the registration of a trademark had to first file an opposition, logically paying a fee to that end, and later, if no agreement was reached with the applicant, they had to confirm their intention to maintain the opposition by paying an additional fee. Subsequently, the INPI would serve notice to the applicant of the ratified opposition and give them the (voluntary) opportunity to respond to the ratified opposition and file a defense with arguments and evidence supporting their claim.
As mentioned, the applicant was not required to participate in the opposition process, nor were they required to pay any official fee. The applicant could remain completely inactive in their trademark file, even losing the chance for their own defensive arguments to be considered, and still receive a favorable decision in the opposition procedure, depending on the Trademark Office’s analysis of the likelihood of confusion and coexistence between the confronted marks.
Currently, trademark files with ratified oppositions from opponents and without any response or manifestation from the applicant are estimated to represent nearly 90% of the cases pending resolution by the INPI. According to information available on the INPI’s online portal, these cases involve trademarks filed more than six (6) years ago that received opposition and have yet to be resolved by the INPI. It is very likely that some (or many) of the owners of these trademarks that received third-party oppositions have lost interest in obtaining registration, either due to the time elapsed since their application was hindered, or due to the challenges of operating in such an uncertain market as Argentina.
In this context, it seems logical to require the applicant to demonstrate their interest in having the opposition resolved by the INPI, especially since all that is required is the payment of a fee (which can be seen as a symbol of the applicant’s intent to defending their trademark). It is important to note that responding to the ratified opposition remains voluntary for the applicant. This new fee, introduced by Resolution No. 295/2024, is paid only once, regardless of the number of oppositions the trademark has received, and amounts to ARS 8,900 (approximately USD 9). As of August 1, 2024, the failure to pay this mandatory fee within the legal term will have a severe consequence, as it will result in the automatic rejection of the trademark application, without further proceedings.
Simultaneously, in order to address the backlog of oppositions that have already been ratified by the opponents, for which the notification to the applicant with a term to file a response was issued in accordance with the previous Resolution No. P-183/18, this new Resolution includes a transitional clause. A few months ago, the INPI informed intellectual property professionals via email that there were over seventeen thousand (17,000) cases in these conditions, and that they only had eight (8) examiners to handle the opposition resolution process. This transitional clause orders that applicants who have not responded to the notification of ongoing oppositions be given a period of 15 administrative business days from the notification to pay the corresponding fee. The INPI will only proceed to analyze the merits of the opposition (and declare it founded or unfounded) if the applicant pays this new fee. Otherwise, the automatic rejection of the opposed application will be ordered.
This transitional clause prompts several conclusions. First, its retroactive nature makes it somewhat questionable from the outset, especially from the opponent’s perspective. The opponent, who was required to ratify their opposition within the legal term and pay the respective fee, might now view the INPI as granting the applicant a second chance to maintain their position. An opponent in this situation might reasonably consider that the INPI is now offering the applicant a new opportunity to uphold their position, despite the fact that the applicant failed to submit any defense within the legal term.
On the other hand, from the applicant’s viewpoint, it might appear unnecessary to be required to pay a new fee, failure of which is interpreted as a lack of interest in their trademark, and leads directly to the rejection of their application. An applicant could argue that their interest in the trademark was demonstrated when they filed their application, for which they already paid the corresponding fee. In our opinion, from the applicant’s perspective, this clause would likely be uncontroversial if it did not involve the payment of an additional fee.
Nevertheless, despite the reservations we have briefly outlined, we believe that this transitional clause (which has historically been a tool used by the INPI to address backlogs, for example, in the Patents department) could prove to be an effective means of swiftly addressing the existing backlog in the resolution of trademarks facing oppositions by third parties. We understand that, from the INPI’s perspective (to continue with the vision of each of the parties involved), it would seem reasonable to assume that the applicant has lost interest in resolving the dispute if they filed a trademark application several years ago, are aware that a third party opposed their registration and ratified the complaint, and yet chose not to respond.
Another conclusion related to this transitional clause concerns the actions available to the applicant which receives the notice to pay this new fee. It is clear that the notification specifically refers to the payment of a fee by the applicant, who will thereby confirm their decision to have the trademark dispute resolved by the INPI, as the competent authority. However, we wonder what the INPI’s stance would be if an applicant at this stage, having missed the opportunity to respond to the opposition against their trademark with arguments, decided—besides paying the new fee—to take advantage of this “second chance” to submit a defensive filing, submitting arguments they believe support their rights.
It would seem that such a filing in response to this notification under the transitional clause would be rejected by the INPI as untimely or late, considering that the applicant already had the chance to present their defense when the ratified opposition was formally notified, with a non-extendable deadline of 15 business days, which has long since passed without a response. However, the text of the new Resolution does not explicitly prohibit this, and hence the applicant might still attempt to include a brief with arguments in their trademark file. This filing would remain in the corresponding file and be publicly accessible, potentially even being considered by the INPI when resolving the conflict, or explicitly dismissed as inadmissible at the appropriate procedural stage. We will have to wait and see what conclusions emerge in practice over time regarding this possibility.
Following the entry into force of this Resolution No. 295/2024, the Trademark Bulletin No. 5721, dated August 14, 2024, included notifications to applicants to pay this new fee in nearly three thousand (3,000) cases of oppositions ratified by opponents in 2019, which are still pending resolution. The following week, the INPI issued another Bulletin (No. 5725, dated August 21, 2024), containing a new batch of nearly three thousand (3,000) cases of oppositions ratified by opponents as of 2021, which were not responded to by the applicant of the opposed application. Of course, it should be noted here that the delays caused by the suspension of deadlines due to the pandemic also play an important role when analyzing the processing times for trademarks filed as of March 2020. At any event, new batches of three thousand (3,000) cases are expected to continue being notified weekly until the current backlog is resolved.
In this context, we have observed that the INPI has not added the recently published notifications—related to the transitional clause—to the digital file (nor to the trademark’s grid) on the INPI’s online portal. Consequently, the only way to detect these payment requests currently (apart from any courtesy notification that may exist) is through a meticulous review of notifications identified as “Anexo I – Intimación Opo. Pago” in the Trademark Bulletins concerning “Notices of Resolution of Oppositions”. While this review is a routine practice for law firms specializing in industrial property, such is not the case for individuals who file their trademarks without the assistance of a professional in the field and who, at best, check the status of their trademark through the INPI’s online portal.
In any case, as a final conclusion, it is crucial to emphasize the importance of responding to oppositions and submitting or offering all the evidence the applicant may intend to rely on at the appropriate time, that is, when they are served formal notice of the ratification of the opposition by the opponent. Likewise, it should not be overlooked that there is a valuable tool in the resolution of oppositions, which consists of private negotiations between the parties, through their representatives (attorneys and/or industrial property agents). This responsible negotiation can take place from the moment the applicant becomes aware of the existence of the opposition, until the opponent is notified of the deadline to ratify the complaint. Only when these negotiations prove unsuccessful should an impartial third party (firstly the INPI, and then the judiciary) resolve the conflict.
Lastly, it is important to bear in mind that the Argentine Trademark Office has already anticipated that, for organizational reasons, the study and progress of newly ratified oppositions by opponents will be temporarily suspended until the notifications in previous unresolved cases by the INPI are completed. If the cases currently being published in these weekly batches of approximately three thousand (3,000) trademarks continue to progress according to this transitional clause under review, it is very likely that this temporary suspension of the progress of newly ratified oppositions will not cause significant delays in the study of new ratified oppositions. We believe that the intent of this new regulation would allow the INPI’s division in charge of resolving oppositions to be “up to date” again within no more than two (2) months.
We trust that this new measure will help reduce the considerable backlog of pending oppositions that have not been responded to by applicants and are awaiting resolution by the INPI. Likewise, we are confident that this new Resolution will allow the INPI to allocate its limited resources to analyze and resolve those cases in which both the applicant and the opponent have an interest in having the conflict resolved by the Argentine Trademark Office.
For further information please contact pgalvan@ojambf.com
