E-News No.45

E-News No.45

Mediation proceedings do not suspend the one-year term to settle trademark oppositions by Ignacio Sanchez Echagüe (Marval, O’Farrell & Mairal- Argentina)

The Argentine Congress passed Law No. 27,222 (effective as from March 22, 2016), which provides that mediation proceedings do not suspend the one-year term to settle trademark oppositions.

In Argentina, an opposition against a trademark application automatically blocks its prosecution. In this event, the applicant has a one-year term –counted as from notification of the opposition– to negotiate the withdrawal of the opposition. Should no agreement be reached during this one-year term, a lawsuit seeking the dismissal of the opposition has to be filed to avoid the lapsing of the application.

The practical effect of the new law is that during the one-year term, the applicant has to start and close the mediation proceedings and file the court action; otherwise, the application at stake will lapse.

Law No. 27,222 does not regulate or provide a transitional period (trademarks applications having oppositions filed under the previous law, which suspended the one-year term). Consequently, the safest course of action in this situation is to consider that the new law is directly applicable to this case, close the mediation stage and file the court action before March 22, 2016.