A Presidential Decree published on January 11, 2018 introduced procedural changes with respect to applications and registrations for trademarks, patents, and designs. As to trademarks, the changes are intended to shorten prosecution and streamline oppositions. Significant amendments affecting trademarks are:
- A multiclass filing system will be adopted.
- By a regulation issued on January 16, 2018 partially implementing the Decree, the term for responding to Office actions in preliminary examination was shortened to 30 days from 180 days. The new 30-day term applies only to Office actions notified after the regulation came into effect.
- Oppositions are now decided by the Trademark Office. Previously, they were decided by Federal Courts.
- The one-year term previously allowed for reaching settlement after oppositions were notified is now reduced to three months. If the parties have not reached an amicable settlement after three months, the Trademark Office will decide the case in accordance with procedures that have yet to be established.
- The one-year term still applies to already-notified oppositions unless the applicant voluntarily points out to the Trademark Office that no agreement was reached with the opposer or the opposer submits new grounds in support of the opposition.
- Any oppositions notified after January 12, 2018 fall under the new three-month term.
- A declaration of use of registered trademarks is now required to be filed at the fifth anniversary of the registration. Regulations establishing the procedure are to be issued.
- The Trademark Office now has the power to decide the nullity of registered trademarks, or to partially cancel a registered trademark, either ex-officio or at the request of a third party, where there has been no use within five years before the expiration request, unless there were “causes of overwhelming force.” A registered trademark will not lapse if it is used in connection with goods and services related to those specified in the registration, even if they fall in different classes.
- Decisions of the Trademark Office may be appealed to the Federal Courts.