New measures for trademark applications in Argentina - partial cancellation of trademarks due to non-use has taken effect in Argentina

New measures for trademark application in Argentina
-----Partial revocation of a trademark due to non-use has taken effect in Argentina

From June 12, 2023, Argentina will be able to partially cancel unused trademarks. This is a significant change for trademark rights holders and will have significant implications for future trademark use strategies in Argentina.

About five years ago, Argentina’s new trademark law introduced the new concept of partial revocation of trademarks. As of this year, the five-year transition period is coming to an end and partial cancellation cases related to trademark use will begin to emerge. A request for partial cancellation of a trademark seeks to partially cancel a trademark that has not been associated with certain goods or services during the five-year period preceding the request. The trademark registration will continue to be valid for those goods or services not included in the cancellation request, but trademark cancellation requests can be made for new marks and renewals.

This is a major change for trademark applications in Argentina. Historically in Argentina, trademark owners would have "defensive marks," which were trademarks registered in other classes that were not in use and not related to the core categories of the business. The use requirement is satisfied as long as the mark is used in connection with any product or service in any of the cited categories. The result is that many companies register their trademarks in all 45 classes or in multiple classes, even if they only use the mark on one product.
"Defensive trademarks" appear to be fair and reasonable in protecting well-known trademarks. However, for those non-well-known trademarks, this approach is unfair. In some cases, these defensive trademarks prevent other companies from entering the Argentinian market with their products, forcing them to use alternative brands.
Now the situation will change due to the implementation of Argentina's new trademark law. These "defensive trademarks" will soon become the targets of trademark cancellation. After some trademarks are canceled, the valid trademarks will only be used for products or services that have been sold. Services (and related or similar products or services) are valid, or are valid only when used as a commercial or event identifier. Unless the trademark is not used due to force majeure.

In a trademark cancellation request, the most important and necessary element is to provide evidence of use or non-use. The burden of proof lies with the challenged trademark owner. Therefore, it is crucial to collect and retain evidence of trademark use. At least once a year, trademark rights holders use as many goods and services as possible in the trademark use and retain copies of any trademark advertisements. In addition, it is most important to ensure that all evidence of trademark use is dated, reliable and verifiable, including sales records, advertising materials, marketing activities, etc., showing actual use of the trademark during a specific time period. These evidences can prove the fact of trademark use and can be accepted and verified by third parties or relevant institutions.

According to Argentinian case law, Argentina only needs to use a unique or significant part or element of a trademark to resist a cancellation request for non-use. Therefore, if a company has a registered design mark but has been using a newer and slightly different version for the past five years, it may still be able to defend it. However, we still recommend that trademark rights holders submit a new version of the design to obtain more comprehensive protection to ensure the rights and compliance of the trademark to the greatest extent.

If a trademark has not been used in Argentina and the trademark owner or licensee is not prepared to start using it, the best way to strengthen the rights and interests currently is to register a slightly different trademark before facing a trademark cancellation request. The more trademarks a rights holder owns, the higher the costs for challengers. Although this strategy is not 100% reliable, it is still the best option available in Argentina.
If the trademark owner is dissatisfied with the final decision on the trademark cancellation request, he or she may request an Argentine court to file a retrial or appeal, until the trademark owner appeals to the Argentine Federal Court of Appeal.

In short, Argentina’s new trademark law highlights the importance of trademark use and protection. This new legal remedy will provide businesses with a powerful tool to ensure their intellectual property rights are protected and their brands retain value.