On June 12, 2023, a regulation related to the expiration of trademarks due to lack of use came into force in Argentina. We are talking about Law 27444 of 2018. This rule allows the National Institute of Industrial Property (INPI, as per Spanish acronym) to declare the total or partial expiration of a trademark that has not been used in the country in the five years prior to the request for expiration. An important new feature is that partial expirations can now be filed to cancel a trademark only in relation to the products or services in which they have not been used, while maintaining its validity for the others.
This provision has particularities that must be taken into account, such as that a trademark does not expire if it has been used in the marketing of a related or similar product, even if it is included in other classes, or if it forms part of the designation of an activity related to those products. Furthermore, expiration does not apply in cases of force majeure that prevent the use of the trademark, and the expiration processes will be processed before the INPI through an administrative procedure, not in court.
Another important aspect is that, once the fifth year has passed since the trademark was registered, the owner must submit a sworn statement to the INPI regarding the use of the trademark up to that point. This new provision establishes that a registered trademark that is not used in a class or for certain products or services does not expire if it has been used in the marketing of a related or similar product, or if it forms part of the designation of an activity related to those products.
Expiration proceedings before the INPI will give rise to a direct appeal before the National Chamber of Appeals in Civil and Commercial Federal Matters.
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