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7 February 2022TrademarksRaquel Flanzbaum

Argentina: INPI publishes first TM decisions

On December 29, 2021, the first administrative resolutions were published in the Argentine trademark bulletin, where Argentina’s IP office, the Instituto Nacional da Propriedade Industrial (INPI), decided substantive issues regarding the invalidity of trademark registrations.

In 2018 the trademark procedure was amended to allow the INPI to decide the cancellation of trademark registrations (invalidity and lapsing due to non-use), subject to appeal to the federal courts, and in 2019 the corresponding rules for the administrative procedure were issued. Before, these matters were dealt with exclusively by the federal courts.

The first administrative decision, issued December 16, 2021, declared the invalidity of the trademark "Kimchi" registered under Nos. 3,067,332 and 3,067,334 in classes 35 and 29, respectively, for being indicative, descriptive or generic, given that kimchi is a traditional dish of Korean cuisine.

The request for cancellation had been made by the Embassy of the Republic of Korea in Argentina, who pointed out, among other arguments, that in 2013 the kimchi had been declared Cultural Heritage of Humanity by UNESCO, that its recipe was part of the "Codex Alimentarius" or “food code”, and the term is included in several dictionaries, inter alia Oxford, Cambridge and Webster.

Another decision, issued on the same date, involved the renewal of the trademark "Nacional Expreso" No. 2,268,022 under Serial No. 3,773,900. Here an American firm, Vanguard Trademark Holdings USA, had requested that the renewal be invalidated because it had been obtained based on a false declaration of use. Another petition, the cancellation due to non-use had also been submitted in a subsidiary manner.

Here the INPI rejected the request for invalidation on the grounds that a sworn declaration of use was presumed to be valid and that it was not the agency’s function to judge whether this declaration was false or not.

This decision is somewhat disconcerting as it means that the party requesting invalidation on these grounds must either resort directly to the courts (something which the new regulations do not allow) or else must necessarily file this request with the INPI and appeal before the courts when it is rejected with the arguments just described.

Regarding the cancellation due to non-use (that had been filed subsidiarily), it was not clear whether it was rejected because the corresponding fee had not been paid or because this action should have been raised independently. In this regard, the examiner's opinion stated that “before addressing the issue, I emphasise that, with respect to the cancellation request, made subsidiarily, it is not possible to proceed with two petitions which have separate official fees. Therefore, the cancellation due to non-use request must be made autonomously”.

Both decisions, “Kimchi” and “Nacional Expreso”, can be appealed to the federal courts, and up until the date of this writing it was not possible to determine whether these appeals had been filed; the deadline to do so expires 30 working days after the publication of the decision in the Trademark Journal (which, as indicated above, took place on December 29, 2021).

Previously, the INPI had also issued other decisions on the cancellation of trademark registrations, but had done so in limine, that is, without going into the merits of each case. Nonetheless, some of those decisions were important.

On two occasions the INPI rejected the request for invalidation directed against trademark applications (not registrations), as the administrative regulations only authorize the INPI to cancel registrations.

Although this is indeed true (Art. 1, Annex III, of INPI Regulation No. P-183/2018 so states), it departs from case law of more than 40 years’ standing that allowed the invalidation of trademark applications, and not only registrations. In view of the current official criterion, whoever wishes to attack an application should do so before the courts or wait until the patent and trademark office grants the registration, which can take a long time.

Other decisions rejected in limine several requests for cancellation (invalidity and lapsing due to non-use) because either the name or the address of petitioner or registrant were missing.

It should be noted that the regulations authorise the INPI to reject cancellation requests where this information is missing, but they do not force it to do so, ie, INPI may rely on its own discretion. The rejection of the request for invalidation is not so important, because it can be submitted again immediately, usually without any other consequences, but the rejection of the request of cancellation due to non-use can be a serious matter if the owner of the registration at stake begins to use the trademark before the second request is filed.

So far, the resolutions issued—substantive or in limine—are few, but they allow us to gradually become acquainted with the official criteria in the exercise of the INPI’s new functions.

Raquel Flanzbaum is a partner at Ojam Bullrich Flanzbaum. She can be contacted at:  rflanzbaum@ojambf.com

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