02-07-2012 (Newsletter Issue 2/12)
TM Application Simplified
The Venezuelan PTO issued a notice abolishing the requirement to physically file a hard copy of a trademark application. As of January 2, 2012, the PTO will allow applicants to file trademark applications along with a copy of the search payment receipt. It will no longer be necessary to enclose the search results as this requirement has been abolished.
The filing and review process shall be made more efficient with these changes. It shall also reduce paper waste.
Source: Bentata Abogados, Caracas, Venezuela
04-11-2011 (Newsletter Issue 6/11)Late Filing of PoA AbolishedThe Venezuelan PTO issued an official announcement, informing that applications not accompanied by the Power of Attorney (PoA) will not be accepted. The late filing of this document has been abolished. The annoucement has become effective end of March 2011. Applications without PoA will not be accepted. Furthermore, copies of the Powers will not be accepted either; only original Powers duly legalized will be valid.
Please find below additional information to this matter:
- Although the above resolution was issued in October 2010 same became effective on March 30th, 2011 without previous warning. The information was verbally informed by the PTO officers, who are in charge of receiving the application filings.
- Until now, the resolution involves only new applications, but no specific mention has been made regarding requirements for renewal proceedings.
- Applications filed before March 30th, 2011 will follow the normal course; in those cases the PTO will officially publish a term to complete the formal requirements.
- It is still possible to file general powers, i.e. for all IP matters of the applicant.
- The Priority documents for trademark or patent applications are not involved in this resolution, therefore same can still be filed later, namely within 9 months (trademarks) and 16 months (patents) as from the filing date of the Venezuelan applications.
Source: Moeller IP Advisors, Buenos Aires, Argentina
02-21-2011 (Newsletter Issue 3/11)Electronic 'Registration Certificates' IntroducedThe Industrial Property Registry (SABI) has recently implemented a new procedure by means of which the corresponding certificate is uploaded in the Registry’s database once a particular trademark has been granted and assigned its registration number.
The certificate, however, does not contain an official or electronic signature. The attorney of record for the trademark in question must review the certificate and if it does not have any errors, print it and file it with the Registry for purposes of signature. After 8-10 working days the duly signed certificate may be retrieved. The same procedure applies in case the certificate has an error, the attorney of record must request that the certificate be corrected and files the documents evidencing where the error lies.
To access the website please click here
Source: Baker & McKenzie, Caracas, Venezuela
12-10-2010 (Newsletter Issue 17/10)
Filings with Complete Documents Only
Following an Official Notification dated October 1st, 2010 and published on October 6th, 2010, the Venezuelan PTO announced that the filing of any new IP matter will not be accepted unless all the required documents and information are submitted at the same time.
'IP matters' refers to patents, designs, trademarks, comercial names, slogans, trademark renewals, changes of name or address, assignments and licence agreements.
In case the documents are not complete and the legal requirements, such as notarization and/or legalization by Apostille, are not fullfiled, the application will be rejected and will have to be filed later, once all necessary data is complete, and no priority will be considered.
As this new resolution violates certain International Agreements, such as the Paris Convention, the Venezuelan IP Attorneys Association (COVAPI) is presenting its different point of view and complaints and expects some adjustments in the resolution soon.
Until April 22, 2006, Venezuela was a member of the Andean Pact and as such, trademarks and patents were governed by Decision 486 of the Andean Pact. On April 22, 2006, Venezuela notified the Andean Pact countries of its decision to withdraw from the Pact. In spite of this decision, the Venezuelan Industrial Property Registry had consistently applied Decision 486 with respect to industrial property matters until recently. On September 12, 2008, the Registry issued an official notice informing the general public that they would no longer be applying Decision 486 and that, instead, they would be applying the 1955 Industrial Property Law. As of such date, the Industrial Property Law has been reactivated entirely.
The trademark registration process pursuant to the 1955 Industrial Property Law is very different from that under Decision 486. One of the mayor differences, besides the reclassification into Venezuelan Classes, is that applications are now reviewed as to compliance with formalities and, once they have passed this review, the Industrial Property Registrar orders their publication in a local newspaper via notification in the Industrial Property Bulletin.
The following is a brief description of the registration process:
1. The application is filed, a separate application must be filed for each class of interest indicating both the Venezuelan and the International Class. A power of attorney is necessary;
2. The application is reviewed as to the fulfillment of formal requirement, if the requirements are not met the application is returned for purposes of amendment;
3. The application is reviewed as to its inherent registrability (absolute grounds of refusal);
4. The Registry orders (via official notice in the Industrial Property Bulletin) the publication of the application in a local newspaper
5. The excerpt of publication must be filed with the Registry;
6. The application is published in the Industrial Property Bulletin for purposes of opposition by third parties;
7. If no oppositions is filed, the application is published as granted in the Industrial Property Bulletin
It is not clear whether or not an application would be published as denied between Steps 3 and 4 or between Steps 6 and 7. Another important aspect to take in consideration is that searches are mandatory and must be filed along with the application.
The opposition period is 30 working days from publication date of the application in the IP Bulletin. Oppositions are no longer decided on their merits; rather, failure to file a response to the opposition will result in the application being declared withdrawn.
Opposition against designation of IR Mark
(The period starts from the national publication date, if not stated differently):
is not a member of the Madrid Agreement or Protocol.
Protection begins with the date of registration. A trademark registration is valid for 15 years from the date of registration. The registration is renewable for periods of 15 years.
If the trademark has not been used for a 2 year period, it may subject to cancellation. In this action the burden of proof lies with the party who filed the action.
The official fee is VEF 1,341.60 (approx. EUR 242.00).
Trademark Licence Agreement
In Venezuela the law does not provide that the agreement has to be in writing, but for the purpose of notification before the Trademark Office and the consequent validity before third parties, it is necessary to have a written agreement. It is not permitted to license the use of unregistered trademarks. An agreement may not be recorded before the Trademark Office if the mark is not granted. A trademark may be licensed for some or all 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, unless otherwise agreed upon in the licence agreement. There are no statutory provisions prescribing the terms of licensing; however for registering a licence agreement before foreign investment authorities, it is required to have very clear termination clauses.
There are provisions in law for the recordal of a licensee with the Trademark Office. The recordal is mandatory in order to be effective against third parties. There is no time frame for a recordal and there is no prescribed form or content for the validity of a licence agreement but it should be in writing. The parties will establish the content of the agreement.
Further documents are required for a recordal:
1. A power of attorney from one of the parties is required, executed before a notary public and legalised or apostilled if granted before a foreign authority.
The licence agreement becomes effective and enforceable against third parties when the agreement is notified before the Trademark Office. The licence is not required to be published.
There is an evidentiary presumption that use by a registered user is permitted use. The licensee may join the proprietor in infringement proceedings. He may also call upon the trademark owner to institute infringement proceedings, but he may not institute infringement proceedings in his own name if the proprietor refuses or neglects to do so, unless otherwise provided for in the licence agreement. The licensee is not required to cite the proprietor as co-defendant in any such proceedings.
If the licensor is a foreign company and the licensee is a national company the agreement has to be registered before the foreign investment authorities.
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We would like to thank the following law firms for their assistance in updating the information provided:
Baker & McKenzie, Caracas, Venezuela
Moeller IP Advisors, Buenos Aires, Argentina
Estudio Antequera Parilli & Rodríguez, Caracas, Venezuela