The Mid-Term Declaration of Use Trap: Missing This Deadline Can Kill Your Trademark

Argentina introduced one of the most unusual trade mark maintenance requirements in the world when it amended Law 22,362 through Law 27,444 in 2018: a mandatory mid-term sworn declaration of use. Every trade mark owner must file this declaration between the fifth and sixth anniversaries of the registration date. Failure to comply creates a legal presumption that the mark is not being used — and blocks the renewal of the registration until the obligation is satisfied. For portfolio managers accustomed to the standard 10-year renewal cycle, this is a trap that catches the unwary.

The Requirement

Under Article 26 of Law 22,362 (as amended), the owner of a registered trade mark must file a sworn declaration (declaración jurada de uso) with INPI stating that the mark has been used in Argentina in connection with the goods or services covered by the registration within the five years preceding the declaration. This declaration must be filed during the window between the 5th and 6th year anniversaries of the date the registration was granted.

For the time being, INPI does not require the filing of supporting evidence alongside the declaration — only the sworn statement itself. However, the declaration must specify the goods, services, or activity for which the mark has been used. The official fee must be paid at the time of filing.

Timing: The Critical Window

The timing rules are precise:

• Earliest filing date: The day after the 5th anniversary of the registration grant date.
• Latest filing date: The day of the 6th anniversary of the registration grant date.
• Window duration: Exactly one year.

For marks that have been renewed, the relevant dates are calculated from the expiration date of the preceding registration term, not from the date on which the renewal was granted. This distinction is important for calculating the correct filing window.

The obligation applies to all trade mark registrations granted on or after January 12, 2013 (five years before the amendment came into force on January 12, 2018). This retroactive application means that even marks registered before the amendment was enacted are subject to the requirement.

Consequences of Failure

If the mid-term declaration is not filed within the prescribed window, three significant consequences follow:

1. Presumption of Non-Use

A rebuttable legal presumption (presunción iuris tantum) is created that the mark has not been used. The owner can overcome this presumption by filing evidence of use, but the burden shifts to the owner to prove use rather than the challenger to prove non-use.

2. Renewal Blocked

INPI will not process any renewal application for the registration until the mid-term declaration has been filed and the corresponding fees — including penalty fees for each year of delay — have been paid. This means that a mark approaching its 10-year renewal deadline without a filed mid-term declaration faces a double jeopardy: the renewal cannot proceed until the declaration obligation is satisfied.

3. Vulnerability to Cancellation

The presumption of non-use makes the registration vulnerable to cancellation actions by third parties. Under Article 26, INPI can declare a mark cancelled, either ex officio or at the request of a party, for goods or services that have not been used for five years prior to the cancellation request. The failure to file the mid-term declaration significantly weakens the owner’s position in any such proceeding.

What If the Mark Has Not Been Used?

If the mark has not been used in Argentina, the owner faces a difficult choice. Filing a false sworn declaration of use is a serious legal matter. INPI has indicated that it will accept a mid-term declaration of “non-use” to satisfy the procedural requirement for renewal purposes. However, filing a declaration of non-use effectively concedes that the mark is not in use, making it immediately vulnerable to cancellation by any interested third party.

Composite Marks: Use As Registered

For composite marks (word plus design), INPI considers use valid only if the mark is used in the form in which it was registered. If the owner has changed the design, typography, or layout of the mark since registration, the current use may not qualify. In such cases, the owner should file new applications reflecting the updated mark and ensure that the declared use corresponds to the registered form.

Interaction with Renewal

In addition to the mid-term declaration, a separate declaration of use must be filed at the time of renewal on the 10th anniversary. This renewal declaration requires the owner to state that the mark has been used within the five years preceding the renewal date. The mid-term and renewal declarations are separate obligations; compliance with one does not satisfy the other.

Strategic Recommendations

• Calendar the 5th-year window for every registration: Add the mid-term declaration deadline to your portfolio management system as a critical reminder, with alerts well in advance of the opening date.
• File early in the window: Do not wait until the final days of the one-year window. Administrative delays or technical issues with INPI’s electronic portal can cause last-minute filing failures.
• Ensure use matches the registered form: For composite marks, verify that the mark is being used in the form as registered before filing the declaration.
• Audit your portfolio: Review all Argentine registrations to identify any marks for which the mid-term declaration has not been filed. Retroactive filings are possible, but penalty fees apply for each year of delay.
• Use the mark commercially: The best protection against cancellation is genuine commercial use in Argentina. If a mark is not in use, consider whether it should be maintained or strategically abandoned.

Key Takeaway

The mid-term declaration of use is a uniquely Argentine requirement that catches many foreign trade mark owners off guard. The one-year window between the 5th and 6th anniversaries of registration is strict, and failure to file creates a presumption of non-use, blocks renewal, and exposes the registration to cancellation. Portfolio managers must treat this as a critical deadline on par with the renewal itself.