Guatemala (GT)
12-01-2011 (Newsletter Issue 14/11)
Legal Notices Electronically
The Congress of the Republic of Guatemala has enacted the Law Regulating Notifications by Electronic Means in the Judicial Organ. by the Decree 15-2011.
In all judicial and administrative proceedings before the Judiciary Offices, the parties and their attorneys may be served at the email address previously indicated. Both the parties and their attorneys may join the system voluntarily by filling their respective membership forms where they grant their consent to join the system.
Notifications made electronically have the same effect and validity as those made in accordance with procedural rules, except when a legal provision provides that the notification must be made in person. The Decree is effective since 19 October 2011.
Source: Lexincorp Central America, Guatemala, Guatemala
05-09-2010 (Newsletter Issue 10/10)
Renewal of Slogans
The actual law established that all slogans "executed conforming to the previous laws will be due when ten years are accomplished up to the legal effect of this law".
That means that slogans registered on/or after November 1st, 2000 have a duration of 10 years from the registration date.
Slogans registered before November 1st, 2000 have to be renewed until October 31st, 2010.
12-14-2009 (Newsletter Issue 4/09)
Adoption of the 9th Edition of the Nice Classivication
The Official Newspaper in Guatemala, published on June 22nd, decision 443-2009 taken by the Ministry of Economy, enables the TM Office to use the 9th Edition of the Nice Classification to distinguish goods and services for the registration of trademarks.
Legal basis is the Industrial Property Law (Decree of Congress 57-2000), which came into effect November 1, 2000. Amendments to our IP Law were last made in May 2006.
Trademark protection is obtained by registration (“first to file” system).
The trademark could be a national or foreign geographical indication, as long as they are not confusing the consumer regarding the origin of the products or services they are protecting.
Prior use in Guatemala is required for the registration of tradenames. In such case registration is only declarative (an exception to the “first to file” system).
Nice classification, 10th edition
Admissible as trademarks are all distinctive signs which can graphically represented, such as words or groups of words, letters, numbers, monograms, forms, portraits, labels, shields, stamps, vignettes, borders, lines, fringes, combination and arrangement of colors, as well as any combination of these symbols. They can also consist of sounds or smells, the shape of products, their packaging or wrapping or the means or places of sale of the products or services (“trade dress”), and others which may be able to distinguish. The following categories of signs are admitted for registration: trademarks, service marks, slogans, collective marks, certification marks, geographical indications and appellations of origin, emblems and trade names.
The application is filed at the Trademark and Patent Office (Registry of Intellectual Property).
A separate application has to be filed for each class (multi-class applications are not yet allowed).
Foreign applicants need a local agent (Attorney at Law).
A power of attorney granted by the applicant, must be duly legalized by the nearest Guatemalan Consulate (Guatemala is not a member of the Hague Apostille Convention). Filings can be made through an unofficial agent (“gestor oficioso”), until the POA arrives and the unofficial actions made on behalf of applicant are ratified.
Foreign applicants do not need a domestic registration and/or incorporation.
The application process includes a formal examination, an examination of distinctiveness and an availability search in order to establish existing third parties’ rights over registrations and/or pending applications.
After examinations and formal admission, the trademark application must be published in the Official Gazette of Guatemala three times within a fifteen day term. Such publication must be carried out within the next 6 months from the date where the publication notice was served to applicant, otherwise application becomes abandoned “ipso facto”.
National:
The opposition period is of 2 months from date of the first publication in the Official Gazette.
Caution is recommended for filing oppositions, as the deadline for filing would be calculated as follows:
1. Publication takes place on August 20, 2012, deadline to oppose elapses October 19, 2012;
2. If October 19, 2012 were to be a non-working day the deadline would be moved to prior working day.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
not a member of the Madrid Agreement or Protocol.
Protection begins with the date of registration. A trademark registration is valid for 10 years from the date of registration. The registration is renewable for periods of 10 years.
Use obligation comes into effect 5 years after registration. If the trademark has not been used for a continuous period of at least 5 years, either calculated from registration or at any other time, it may be subject to cancellation.
Cancellation due to non-use is not verified ex-officio, but instead is subject to a judiciary civil action being brought by an interested party which desires to cancel the registration.
The official fee before The Intellectual Property Registry of Guatemala is USD 47.00 (approx. EUR The official fee before The Intellectual Property Registry of Guatemala is USD 47.00 (approx. EUR 32.00). The official fees regarding the publication in the Official Gazette is of approximately of USD 110.00 to USD 300.00 (approx. EUR 90.00 to EUR 222.00), but varies largely based on the fact that cost is levied on the amount of goods or services to be covered by the application.
Trademark Licence Agreement
In Guatemala Trademark Licence agreements must be in writing. Our law only contemplates the licensing of registered trademarks. The licence may be restricted to only some of the goods or services in respect of which the mark is registered. The sale of a registered trademark does not automatically terminate the licence. There are no statutory provisions prescribing the terms of licensing, but quality control provisions must be included in the agreement (if adequate quality control provisions are not observed and the public is deceived, the licence in favour of licensee could be suspended).
Recordal
The recordal of trademark licences before the Intellectual Property Register is voluntary. Nonetheless, it is advisable under certain circumstances (i.e. enforcement of the trademarks by licensee, for fiscal purposes of local taxpayer, etc.). There is no time frame for a recordal. Further there is no prescribed form or content for a licence agreement as it is a private document between the involved parties, but at the very least, the following provisions should be included in the Agreement (or extract thereof): a) Names and domiciles of licensor and licensee; b) The trademarks being licensed, along with their registration numbers; c) Term of the licence, if applicable; d) Exclusive or non-exclusive nature of the licence; e) Special covenants and/or restrictions agreed by the parties; f) Quality Control provisions.
Effectiveness
The licence becomes effective and enforceable against third parties, when it is signed by the licensee and the licensor due to the fact that it is not compulsory to register the licence agreement. The licence is not required to be published, unless either party decides it wants the licence registered, in which case a publication in the Official Gazette takes place.
Infringement Proceedings
There is an evidentiary presumption that use by a recorded licensee is permitted use. The licensee may join the proprietor in infringement proceedings and he is entitled to call upon the trademark owner to institute infringement proceedings. He may also institute proceedings in his own name if he is an exclusive licensee and/or if the proprietor refuses or neglects to do so. In this event, he can start the proceedings against an infringer two months after the licensor/proprietor was informed. The licensee must request for the court to summon the licensor as a co-defendant in any infringement proceedings.
| Search type |
First class |
Add. class |
| Word Mark Search (availability) |
230,00 € |
190,00 € |
| Word Mark Search (identical) |
210,00 € |
170,00 € |
| Extended Search (word mark, company name, domain) |
560,00 € |
190,00 € |
| Device Mark Search (availability) |
420,00 € |
290,00 € |
| Trademark Owner Search |
340,00 € |
|
| Company Name Search |
390,00 € |
|
| Domain Name Search (extended) |
|
|
| i-Search (word mark availability + legal opinion) |
440,00 € |
420,00 € |
The Prices above are S.M.D. Markeur Search Fees
Country Index is a free service of S.M.D. Markeur, an international IP searching and monitoring firm.
We would like to thank the following law firms for their assistance in updating the information provided:
Country Survey
08-20-2012
Bufelco Bufete López Cordero, Guatemala, Guatemala
11-18-2010
Moeller IP Advisors, Buenos Aires, Argentina
Licensing
08-20-2012
Bufelco Bufete López Cordero, Guatemala, Guatemala
12-18-2011
Moeller IP Advisors, Buenos Aires, Argentina