A new IP law, No. 21.355, enter into force on May 9, 2022, modifying some articles of the current IP Law No. 19.039 dated 1991 and its subsequent amendments.
This new law introduces important modifications aimed at perfecting the system for the IPRs protection, improving its safeguarding and observance, facilitating the processing, modernizing processes, contributing to its harmonization with international standards and being an important contribution to the system users.
The most relevant changes introduced for trademarks, patents and industrial designs / drawings are as follows:
Trademarks
1.- New types of signs that can be registered as trademarks are recognized. The new Law acknowledges the possibility of registering olfactory and three-dimensional trademarks. The new law eliminates the phrase "that allows for graphical representation".
2.- Trademarks for commercial and industrial establishments are eliminated. Existing trademarks registered under such coverage must be renewed as service trademarks, so as to maintain acquired rights.
3.- Legal recognition of collective and certification trademarks (previously acknowledged by Circular No. 09/2011 on collective and certification marks as published in the Official Gazette dated 11/26/2011).
4.- Incorporates the possibility of total or partial cancellation of a trademark registration for lack ofeffective use or loss of distinctiveness. The application for cancellation of a trademark will be submitted by a third party and the burden of proving use will remain with the holder of the registration. The cancellation could be requested only from 5 years from the filing application date or renewal date.
5.- The law incorporates new criminal sanctions for those who counterfeit a trademark, includingimprisonment. In addition, the owner of the registration may request compensation of up to 2,000 UTM (Monthly Tax Units) (approximately USD 140,000) per infringement.
6.- Payments of the official fees that affect the recordals of assignments , change of names or other acts concerning existing registrations must be made at the time of filing the respective filings.
7.- The new law includes the provision for the Trademark and Patent Office to become a party of the proceedings and to be able to appeal before higher instances in appeals filed against final resolutions.
Patents
1.- The new law allows for provisional patents applications, establishing a 12-month period to file the definitive patent application while preserving the priority date of the provisional application. The term of validity of the definitive patent application will be counted from the date of provisional application.
2.- The concept of patent usurpation is introduced. This action protects the legitimate creator of aninvention from potential attempts by third parties to obtain ownership of the right.
3.- An additional fee is established for applications exceeding 80 pages. Those pages with DNAsequences are not considered.
4.- The period for holders to request supplementary protection is reduced from 6 months to 60 days.Additionally, the term of additional protection is limited to a maximum period of 5 years if an unjustified administrative delay is demonstrated.
5.- Restoration of the priority right is allowed within two months after the expiration of the priority period.
6.- The renewal or maintenance fee of the patent for the second decade can be paid in full before the expiration date, or in ten annual installments.
7.- Those applications failing to comply with any of the processing requirements and/or deadlinesestablished by our law or its regulations are considered abandoned and archived; however, applicants are provided with a term of 45 days to request for the reinstatement and reactivation of applications subject tothe payment of a reinstatement fee.
Industrial Designs / Industrial Drawings
8.- The most relevant change is that in addition to the general application system that comprises asubstantive examination for industrial drawings and design applications, an abbreviated applicationprocedure is established, which only provides the applicant with a certificate of deposit but it does not allow its holder to take legal actions until such time as the substantive examination has been requested and approved.
9.- The protection term of industrial drawings and designs is extended from 10 years to 15 years.
10.- Those cases of industrial drawings and designs filed before the entry into force of this law May 19, 2022 extendthe validity of the registration for an additional term of 5 years.
11.- Applications for industrial drawings and designs filed under the validity of the old law, and that do not have an examiner appointed, may opt for the processing of the abbreviated procedure.
12.- The renewal or maintenance fee for Industrial designs and drawings applicable for the second and third quinquennium, can be paid in full before the expiration date of the first period, or in annual installments.
