As of 12th of June 2023, Argentina’s National Institute of Industrial Property (INPI) may declare – ex officio or upon a petitioner request – the partial cancellation of a trademark. This means that INPI may cancel a trademark only in relation to the products or services for which the trademark was not used.
Particularities of the partial cancellation of trademarks in Argentina
The lack of use must have happened within the five years previous to the cancellation request. The regulation establishes that the request made by a petitioner will only prosper when the trademark affects its subjective right. For instance, when the ‘not-used’ trademark is impeding or obstructing the registration of a trademark of the petitioner.
The partial cancellation ex officio
The partial cancellation ex officio by INPI will only proceed when the following conditions are fulfilled altogether:
1)The trademark has not been used within the previous five years;
2) The owner of the trademark has not submitted the mid-term sworn statement of use established in the Trademarks Law;
3) It is not a well-known trademark in the terms of the Paris Convention and TRIPS; and
4) The owner does not have an identical trademark registered in a class related or linked to it; or if it had, that it had not filed the sworn declaration of use either in that class.
Exceptions to the partial cancellation of trademarks in Argentina
The partial cancellation will not proceed when the owner demonstrates that a force majeure cause impeded the use. Nor does a trademark registered and not used for certain products or services expire, if the same trademark was used in the commercialization of a product or in the provision of a related or similar service to those, even included in other classes.
Additionally, the partial cancellation may be used as a defense in an opposition. In that case, INPI will solve the cancellation in an Administrative Procedure for Resolution of Oppositions.
Procedure of a partial cancellation in Argentina
The cancellation request must include the following:
- name and address of the petitioner
- the right that the trademark affects
- the trademark whose cancellation is requested
- the facts on which it is based and the proofs
- payment of the official fee.
If INPI initiates the cancellation ex officio, it must detail that all the conditions for its origin are verified.
The owner of the trademark registration will be notified of the cancellation. After that, the owner will have a period of fifteen (15) business days to submit the proof that he is entitled to. Once the notification has been answered or the term to do so has expired, INPI will proceed to issue a resolution.
If you need professional advice regarding partial cancellation of trademarks in Argentina, contact us.