“Trademarks are registered to be used” is a phrase that clearly summarises one of the fundamental principles of trademark law. Evidence of this principle can be found in the fact that use is a requirement for the renewal of a registration and the maintenance of its validity. However, lack of use does not automatically result in the cancellation of the registration.
Trademark registrations that are not used may become obstacles to the registration of new marks, thereby hindering the commercial activity of trademarks that are effectively in use or intended to be used in the marketplace.
In Argentina specifically, trademarks that have been registered but unused for five years or more may be cited by the Trademark Office as prior trademark registrations, blocking new applications, or may serve as the basis for an opposition filed by a third party against a new trademark registration.
To overcome these difficulties, Argentine law provides the possibility of requesting the cancellation of trademarks due to non-use, once five years have elapsed from the date of registration.
From courts to the Trademark Office
Following the modification introduced by the Decree on Debureaucratisation and Simplification of 2018, non-use cancellation actions are now filed and resolved directly before the Argentine Trademark Office instead of litigated in court. This has established a more dynamic and efficient mechanism that has significantly reduced the time required for resolving these actions, with a tangible and positive impact on commercial and industrial activity.
While it is true that implementation of this mechanism experienced some initial delays – given that the first decisions were issued only at the end of 2021 – it is equally true that today, with the procedure fully in operation, decisions on non-use cancellation proceedings are issued within reasonable timeframes and at lower costs than judicial actions of the same nature.
Thus, when an applicant encounters an obstacle to registration due to the citation of an unused prior registration by the Argentine Trademark Office, a first decision on non-use cancellation may be obtained within a matter of months. If the obstacle stems from an opposition, the non-use cancellation action will be resolved together with the opposition, which entails a longer process.
Partial cancellation for unused goods or services
The modification also addressed situations in which the obstacle to registration is based on a broad-scope registration; that is, a trademark granted for multiple goods or services but either not used at all or used only for some of the goods or services for which it was granted.
This innovation, effective as of June 2023, establishes the possibility of requesting partial cancellation for non-use; that is, cancellation may be sought solely with respect to those goods or services of interest to the new applicant for which the registered trademark has not been used for five years, while the registered trademark remains in force for all the other goods or services. However, this will only be admitted when the challenged goods or services are not similar or related to the goods or services for which the trademark is being used in commerce.
This mechanism enables the design of an effective strategy for obtaining registration, avoiding the need to challenge the entire prior registration. It benefits both new applicants – who may obtain registration even when the prior mark is used in the marketplace for different goods or services – and current trademark owners, who may retain their registrations in part even if unused for certain goods or services, preserving the possibility of using them in the future.
Therefore, the criterion to determine whether total or partial cancellation is appropriate when some use of the mark exists – whether in the same or in a different class – is based on relatedness or similarity between the goods or services for which cancellation is requested and those for which the mark is actually used.
Assessing relatedness and likelihood of confusion
To determine relatedness or similarity, an analysis must be carried out to assess whether consumer confusion is likely to occur regarding origin or manufacturer, taking into account variables such as:
The purpose or function of the goods or services;
If they satisfy the same need;
If they are substitutable or complementary;
If they are intended to be used together;
If they are directed to the same consumer audience; and
The commercial channels through which they are offered.
Consistent with the objectives of the modification and the ability to request partial cancellation, the Argentine Trademark Office issued Resolution 288/2019, eliminating the possibility of filing applications that claim protection for “all the goods or services in the class”.
Since then, applicants must specifically list the goods or services to be distinguished by the mark in the application form. This prevents applicants from obtaining protection over goods or services for which they have no genuine intention to use the trademark.
Furthermore, in line with this objective, an official fee applies for each additional good or service beyond the first 20 included in the application, discouraging applicants from including goods or services that they do not intend to manufacture or provide.
Promoting an efficient and fair trademark system in Argentina
The modifications introduced regarding non-use cancellation represent a significant step towards a more agile trademark system aligned with market reality.
The transfer of decisions from the courts to the Argentine Trademark Office, the possibility of partial cancellation, and the requirement to specify with greater precision the goods or services to be covered strike a balance between the rights of current trademark holders and those of new applicants, fostering a fairer, more efficient system that promotes effective competition in the market.
