Puerto Rico (PR)
05-26-2010 (Newsletter Issue 11/10)Trademark Law AmendedBy enacting Act 169 of December 16th, 2009, the government has adopted a more organized and comprehensive trademark regime. For example a more flexible registration process is available. New elements can be registered like sounds and smells. There has been also some changes for the opposition of trademarks.
For more information please click here to read the article of Moeller IP AdvisorsSource: www.iloinfo.com
Legal basis is the Puerto Rico Trademark Act, in force since February 14th, 1992 last amended by Act 169 of December 16th, 2009. Although Puerto Rico is part of the USA with special status, it has a trademark law independent of the USA. The former alternative of obtaining a Puerto Rico Trademark based on an US registration is no longer available.
Trademark protection is obtained by registration in the case of marks that are not in use (intent-to-use applications) and by prior use in the case of marks that are in use in Puerto Rico. Secondary meaning can be obtained by proving use of the trademark in commerce for the last five years.
Registrable as a trademark are all distinctive and graphically representable signs, such as words, names, acronyms, letters, numbers, devices, emblems, combinations or shades of colors, three-dimensional forms, sound marks, smell marks and any combination of the mentioned signs.
The following trademark types are registrable: trade marks, service marks, collective marks, certification marks.
The application is filed at the Trademark Registry, which is kept by the government.
A single application can cover multiple classes unless there are different filing bases. For a multi-class application, the applicant must pay class fees on a per-class basis.
If the applicant is not domiciled in this jurisdiction, it is not necessary to provide a local address for service. A home trademark representative/attorney/agent domiciled in the applicant’s home country or a representative /attorney/agent domiciled in the trademark jurisdiction of interest may file directly in this jurisdiction.
A power of attorney is not needed. The Rules and Regulations of the Trademark Office provide that when an attorney files an application for registration as well as other transactions that relate to registered marks or pending applications, it is presumed that he or she is authorized by the mark owner to so proceed.
The application process includes a formal examination, an examination of distinctiveness and a search for prior trademarks.
The processing time from first filing to registration or first office action is approx. 15 to 20 months.
The opposition period is 30 days from publication date of the application. The 2009 Act provides, for an extension of time of 20 days (with just cause) to file an opposition to the registration of a mark after the 30 opposition period has lapsed. The extension has to be requested prior to the expiration of the original 30 day term.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
See US (30 days). IR designating the United States automatically covers Puerto Rico.
A trademark registration is valid for 10 years from the date of registration, which dates back to the filing date and can be renewed for equal periods.
A trademark is considered to have been abandoned after 3 years of non-use.
The filing of a statement of continued use by and during the 5th and 10th year of registration is required. The Registrant can request an extension of 1 year for filing said statement which can be granted or not by the TM Office depending on the justifications given by the Registrant
The official fee is USD 150.00 per class (approx. EUR 107.00). Additional fees associated with mark applications include publication costs of USD 60.00 (approx. EUR 31.00) and notarization costs of USD 25.00 (approx. EUR 18.00).
Puerto Rico is a Commonwealth of the United States. It is unique in the sense that it is neither a state nor an independent country, and it has a significant amount of self-government. However, for many purposes Puerto Rico is treated as if it were a state.
The Puerto Rico Federal Relations Act provides that the statutory laws of the United States shall have full effect in Puerto Rico, unless locally inapplicable. Therefore, rights acquired under the Lanham Act are valid and enforceable in Puerto Rico.
In addition to the applicability of the Lanham Act, Puerto Rico has its own trademark registration system and its own trademark statute, the Puerto Rico Trademark Act, which coexists with the Lanham Act. A partial pre-emption will take place when a provision of Puerto Rico Trademark Law runs in conflict with a provision of federal trademark law.
Licensing practice in Puerto Rico mirrors that in the United States.
Trademark Licence Agreement
Trademark licensing requires a contract which defines the rights and obligations of the parties. Although not required, a written contract is strongly recommended. Registrations, applications, and unregistered marks can be licensed. A licence agreement should include: the name and address of the licensee and licensor; details of the mark(s) to be licensed; the term of the agreement; and quality control provisions. As in the United States, the lack of quality control provisions could result in abandonment of the mark.
Based on the revisions that passed in 2009, the Puerto Rico Trademark Act allows a registrant to file a copy of a licence granted for use of a mark, and allows a secured party to file a lien against a mark, so that either document will be placed in the file for the mark. The recordal of a licence is not mandatory. There is usually no substantial review of the information recorded and there is no time frame for a recordal. When recording a licence agreement, the agreement should define the rights, the licence and obligations of the parties. Further, it should address issues such as allowed trademark use, the trademark filings, the right to sub-license and other typical provisions. It must address quality control.
The agreement becomes effective and enforceable against third parties depending on the terms of the licence agreement. Issues such as reputation and enforcement should be addressed, including commencement of these rights.
As opposed to the former statute, which provided relief solely for the trademark registrant, the new 2009 Trademark Act expressly provides that the “registrant,” the “owner,” or any person with a written authorisation from the owner of a mark may file suit seeking damages.
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We would like to thank the following law firms for their assistance in updating the information provided:
Wolf Greenfield & Sacks, P.C., Boston, MA, USA
Moeller IP Advisors, Buenos Aires, Argentina
Wolf Greenfield & Sacks, P.C., Boston, MA, USA