Review of the Argentine Trademark Office’s note about new decisions on nullity and cancelation actions of trademark registrations, published in La Ley on November 27, 2023.
The article has two main parts: (i) a brief review of the new system of nullity and cancelation action of trademark registrations, introduced by Law 27.444; and (ii) a review of the latest administrative decisions on this matter, which provides a better understanding of the position and criterion currently being adopted by the Argentine Trademark Office.
The first part is introductory, as it reviews the regulations on the subject and places the reader in context.
The second part introduces a detailed analysis of the new administrative decisions. Among them, the “structure of the rulings“, which constitute the basis of the administrative act, is analyzed. The author emphasizes that the rulings have a similar structure in almost all the cases analyzed.
The requirement of affecting a “subjective right”, introduced by the new legislation, is also analyzed and compared with the concept of “legitimate interest” required by the legislation prior to the last amendment of Law 22.362 on Trademarks and Designations.
The author analyzes the cases in which the Trademark Office rejects a cancelation action or nullity in limine. Thus, all claims expressly or tacitly based on Section 24, subsection b) of Law 22.362, i.e., those involving bad faith, have been rejected in limine.
The article recalls the strict criterion adopted when the formal requirements of Annexes III and IV of Resolution P-183/2018 are omitted, such as basic data of the interested parties or the applicant’s address, leading to its rejection in limine.
The author then deals with the rejection of actions involving the falseness of a sworn declaration of use, matters that fall within the Court’s jurisdiction.
The author also refers to the nullity of a trademark registration due to administrative errors, a case of absolute nullity according to section 24, subsection a) of Law 22.362 (i.e. nullity of a trademark registration in breach of the law).
Subsequently, the author comments on the cases of admission of nullity and cancelation action. These cases are few compared to the rejections, although the author points out many precedents that provide insight into the Trademark Office’s position.
An important point to be noted is the different administrative criterion either for oppositions of a trademark application or nullity of a registration, being stricter in the latter case.
In turn, the author comments on some circumstances that the Trademark Office does or does not assess, such as the invocation of an international priority; coexistence in the market or in the registry; the non-filing of the owners of the rejected trademarks; or the presence of an element of common use in the class.
Finally, the author concludes that, according to her view, the subjective right necessary to be able to request the nullity or cancelation of a trademark registration does not differ significantly from the legitimate interest traditionally required by Law 22.362.
For more information on the present note, please contact the author at rflanzbaum@ojambf.com
