Partial Expiry of Trademarks in Argentina

The Law 27,444 of the year 2018 has introduced various modifications to the Trademark Law 22,362, including those related to the expiration of trademark registrations.

Starting from June 12, 2023, anyone with a legitimate interest or, specifically, the INPI (National Institute of Industrial Property) ex officio, may request partial expiration due to non-use of a trademark registration, concerning products or services that have not been used within the five years preceding the expiration action.

When can I request expiration?

Regarding the request for expiration at the request of a party, it is worth noting that the amendment to Article 26 of Law 22,362 establishes that it will ONLY be admissible when the applicant invokes the infringement of a subjective right, for example, when the unused trademark is preventing or obstructing the registration of the applicant.

On the other hand, the ex officio request will occur when the INPI detects that: a) The trademark was not used within the five years preceding the request; b) Its owner has not submitted the midterm declarations established in the same article; c) It is not a well-known trademark within the terms of the Paris Convention and TRIPS; d) The owner does not have a registered identical trademark in a related or linked class, and in case they do, they have not submitted the sworn declaration of use in that class when required.

What happens if expiration is raised against me?

If you are the owner of the trademark for which partial expiration is raised, keep in mind that it will not proceed if you can demonstrate that a force majeure prevented the use of your trademark for certain products or services. It will also not expire if the same trademark was used in the marketing of a product or the provision of a service similar or related to those, even included in other classes.

Finally, it should be noted that partial expiration could be raised as a defense against opposition. In that case, the INPI will decide on expiration in the Administrative Opposition Resolution Procedure.