NEWSLETTER EMPRESARIAL DEL ESTUDIO – Septiembre 2019
1. You want your business to be successful
…and provide you with a living doing what you love. We at Bonamark.com understand that getting a trademark is not the most important task you have and that you do not have time to go through all those legal books, articles and FAQ’s.
But ignoring your trademark protection or making mistakes when applying for your trademark might destroy your business’s future. You can’t imagine how many cunning villains are after your trademark, among those:
- Amazon hijackers – they will hijack your listings and destroy your sales and reputation.
- Trademark trolls – not as famous as patent trolls, those will steal your trademark and then try to sue or blackmail you.
- Competitors – they want you to stop selling your products and they will use all means to make sure you are out of business.
You probably do not know a lot about trademarks, but that’s OK. We are here to help you get 100% out of your trademarks. Keep on reading to learn those 5 easy-to-follow recommendations!
1. Get a wordmark first
When applying for your first trademark, make sure that you file it as a wordmark unless you absolutely have to file it with a logo. Wordmarks have the broadest scope of protection and if you have a wordmark you will be able to use it as a part of any logo. Filed logos must be used exactly as they are filed.
2. Protect abroad.
File your trademark in foreign countries at least a year before you start using your trademark there. The process can take up to 18 months in some countries and you don’t want to realize that your trademark can’t be registered AFTER you started selling and promoting your brand abroad.
3. Get a strong one.
When coming up with a new trademark, choose a strong one. Weak trademarks are very difficult to enforce and can be unregistrable in some countries. Get more details here: link
4. Search before file.
You can find a cheaper attorney, you can save on your filing fees, but trying to save on a trademark search might backfire. This can result in applying for an unavailable trademark. You can get a detailed trademark study at Bonamark for just $99 in the EU, which is just 7% of the filing price and it may save you thousands in the long run.
5. Don’t be overspecific.
Let’s say you sell wooden chairs and metal tables and want to get your trademark protected. While adding only those items to the description of your trademark is technically correct, your trademark will protect a very limited number of products. You don’t have to be overspecific. Chairs are furniture, right? Why not add furniture to the description? This will cover all types of furniture you might want to produce in the future.
Following those 5 recommendations will make sure that your brand gets the protection it deserves – and you won’t have to worry about your trademark for the next 5-10 years.
Your strong, properly protected international trademark will keep potential infringers at bay and it won’t cost you an extra dime!
2. Trademark Registration in Argentina: Recent Legal Developments
Artículo publicado por Estudio Villano en el portal HG.org Legal Resources
Recent regulations in Argentina (Resolution 123/19, implementing Decree 242/19) simplify and speed-up the procedures for trademark (TM) registration and renewal, among other practical aspects. They are effective from June 3, 2019.
Modification of the Terms to Answer Official Notices.
The 10 year period of renewed trademarks will be counted as from the renewal due date of the registration being renewed (not as from the date on which the renewal application is accepted).
The INPI (National Trademark Office) will be entitled to allow the partial registration of a trademark application.
The period to answer objections issued by the INPI due to formal defects is shortened to 10 working days.
The period to answer an office action issued by the INPI on the basis of the substantive analysis of the TM application is 30 calendar days. These time extensions are available: 1° extension: 10 calendar days, 2° extension: 5 calendar days.
If in addition to the objections raised by the INPI the application has received oppositions, the term to file a response is 3 months.
Mid-Term Declaration of Use
It is now required the filing of an affidavit between the fifth and the sixth year as from the registration date. It is mandatory for all TM granted as of January 12, 2013. Renewal applications shall not be accepted if the 5th-year declaration of use is missing.
It will be possible to file the affidavit of use later on. Yet, as of January 12, 2020, the Trademark Office will require the payment of additional official fees for each year in breach of the obligation to file the affidavit of use.
If the TM has been used in Argentina the 5th-year use declaration should be filed and the official fees must be paid.
If the TM has not been used in Argentina is subject to a potential partial or total non-use cancellation action either ex officio by the Trademark Office or at the request of a third party.
And to proceed with the renewal of a trademark registration the INPI shall accept a mid-term declaration of “non use”.
The INPI is entitled to solve on nullity issues only when the registered trademark infringes the provisions of the Trademark Law.
Renewal applications may be filed within 6 months, prior to or after the renewal due date of the registration.
Cancellation Actions Based on Non-Use of the TM
Non-use cancellation actions of any type, seeking either the partial or complete cancellation for lack of use of a trademark registration, should be filed with the INPI. The INPI still has to establish the procedure for these cases.