For companies in the United States who have done business in Argentina, the bureaucracy has always been a significant hurdle. Processes simply take longer or require more complex submissions than in the United States. Argentina is aware that this bureaucratic barrier costs the economy growth particularly in the area of intellectual property. Argentina has therefore taken steps to simplify the process in order to make the protection of intellectual property in the country more inviting and competitive.
Decree N º 27/2018 of De-bureaucratization and Simplification (the Decree), published in the Official Gazette on Jan. 11, introduces important changes in the formalities required in dealing with the government. The law is clear as to its purpose which is “to encourage investment, productivity, employment and Social Inclusion.” Because of these greater economic goals, the Decree goes beyond mere procedural changes to actual substantive changes. We will discuss how well it succeeds in its goals.
Chapter 8 of the Decree introduces changes to the trademark law. This section makes more elements of registration and opposition available online. The applicant is required to provide a contact email and to submit all the necessary documentation for an opposition, response to examiner action or renewal electronically.
The opposition process is one that has been particularly simplified. Previously, an opposition could take over a year. Now the parties have three months to reach an agreement after an opposition has been filed or the National Institute of Industrial Property (INPI) will rule on the opposition. Once a decision is rendered, the parties will have 30 days to appeal to the Federal Civil and Commercial Chamber of National Appeals. These changes seek to bring the Argentine system more in line in terms of speed and procedure with systems in the United States and other countries. This accelerated system will be particularly welcomed by smaller entities who cannot afford the cost of a drawn-out opposition process.
INPI’s authority has also been expanded by the law. INPI will now have greater authority to render decisions nullifying marks used in contravention of law. Previously only courts could render such a decision. Currently how this will be implemented is still pending the release of appropriate executing regulations.
Article 26 of the law also expands grounds for loss of a registration due to abandonment. The law now allows INPI to deem abandon parts of a registration for goods that have not been used in the previous years. As in the United States, the Argentine registrant will now have to file a sworn statement of continued use between the fifth and sixth year in order to maintain its registration. These new requirements will help to discourage the use of “defensive marks” used to block new brand owners from entering the market.
Changes have also been made to the patent system. As with the trademarks, patent applicants are now able to submit their applications electronically. Dates are accelerated in the application process as well. In particular:
- The time given to third parties to file observations is reduced from 60 to 30 consecutive days and submission of a power of attorney is no longer required and only submitted if requested by INPI.
- Time to convert patent to utility model from 90 to 30 consecutive days.
- To correct errors in response to examiner requests from 180 to 30 days.
- To pay the examination fee from thre years to 18 months.
The utility model will now be examined within 3 months and will not be published if it is not approved. Finally, documentation establishing priority under Article 4 of the Paris Convention will only have to be presented upon request by the examiner.
Industrial Models and Designs (U.S. Design Patents)
A final area of changes in the new law involved industrial models and designs. The previous law defined industrial models and designs as covering “the forms or appearance incorporated or applied to an industrial product which confer an ornamental character.” The new law expands the definition to include artisanal or handcrafted products.
At the application stage the new law also allows the submission of photographs and digital reproductions instead of drawings in support of the application and expands the number of simultaneous submissions of designs or models which belong to the same Locarno Classification. The photographs or digital reproductions are acceptable as long as they sufficiently identify the object the applicant desires to protect.
A significant change to the novelty requirement is that novelty is not lost for showing a model or design at a domestic or international trade show as long as the application is filed within six application for a period of six months, an option that will help when presenting applications in multiple jurisdictions. Finally, a grace period for renewal subject to surcharge fees has been granted in the event that the deadline is missed.
In the area of enforcement, the new law allows registration owners to seek statutory damages under Article 21 of the Law of Models And Designs based on a formula that adjusts for the pervasive currency devaluation in the country. This reduces the burden in establishing actual damages for the registration owner.
Modernization in Argentina’s intellectual property laws is welcome but a lot remains to be seen in the implementation regulations.
Jorge Espinosa is a partner with intellectual property law firm Espinosa Martinez in Miami and Patricio M. Albornoz is a senior associate with M.&M. Bomchil in Buenos Aires, Argentina.