Search
Trademark availability searches are made according to the international nomenclature of the Nice Agreement; such search applications may target one class trademarks. Device marks cannot be searched. The approximate time frame to receive results is within 2 days.
Application
Trademark filing applications require a Power of Attorney without formalities. The application number is assigned at filing. Priority cannot be claimed. The application may be presented specifying use or intent to use.
The application can be refused on the basis of a registered or applied trademark owned by a third party. In the case of a non-registered famous marks owned by third parties, such party may present opposition to the registration.
The procedure available to respond to a refusal is once having evaluated the application; the Trademark Office issues a notification. The applicant will have 90 days from the date of receipt to file the response.
The applications are published once they have been examined in form and substance. Then the application can be subject of an opposition, which can be filed within 30 days as of the publication date of the mark.
Registration
Granted the registration there are maintenance fees due to keep the registration alive that should be paid as follows:
- By the third year from the filing date, a fee and a Declaration of use for those trademarks that have been submitted with intention to use in commerce must be filed.
- Between the fifth and sixth year from the filing date, a fee and a Declaration of Continued Use must be filed.
- Between the ninth and tenth year from the filing date, a fee and a Declaration of Continued Use and Renewal must be filed.
The first renewal due is between the ninth and tenth year counted from the filing date.
Non Use Cancellation
Trademark Law does not provide for a cancellation for non-use procedure. However, if a trademark was filed with intent of use and the Declaration of Use by the third year of the filing date was not filed, the Trademark Office would declare the application or registration as abandoned.
Cancellation
A registration can be subject to a cancellation action raised by a third party. The cancellation proceedings at the request of part begin with the filing at the Office of a reasoned submission, which explicitly define the causes of the cancellation request and relevant tests are proposed. This action is interposed before the Trademark Office, in the same manner the appeal is interposed before such Office earlier than the Court of Law.
The cancellation request must be submitted within five years following the date of registration or anytime. Once the request is filed, the Secretary shall notify the owner of the trademark registration. After evaluating the positions of the parties, the Registrar shall decide whether the owner is entitled or not to maintain the registration of the mark.
A cancellation proceeds if the registered trademark has been abandoned, the registration was obtain in bad faith or fraud, if the trademark has become in a generic term for the product or service that identifies, or if the use of the trademark causes confusion in the market.
The time frame to obtain a decision depends on whether a response is received from the registered owner who shall have thirty days to respond to the request for cancellation and if so, upon receiving the answer, the examiner will set the opening conference.
Assignments
In order to record an assignment, it is required a signed document by the Assignor & Assignee, duly legalized and Apostilled. The same shall include the amount by which the mark has been passed, which assigns all rights, title or interest together with the goodwill of the business in which the mark is used. The time frame to receive the assignment certificate is 8 to 9 months.
Renewals
In the case of renewals of trademark registrations grated before December 16, 2009, the information of the trademark and/or a copy of the certificate is required. For the renewal of a trademark registration grated after the indicated date, evidence of use must be filed, i.e. a tag, label or product photography and service marks a prospectus or advertisement in the newspaper or magazine where the trademark may appear as it was recorded and in connection with the goods or services. The renewal is grated for a period of 10 years.
