06-30-2015 (Newsletter Issue 10/15)Tax Stamps IncreaseThe Venezuelan Patent and Trademarks Office (VPTO) has issued a group of notices confirming that, as of May 28, 2015, the increase in value and change in acceptable currency of payment applicable to transactions by foreign individuals and corporations as established in Article 06 of the Presidential Decree No. 1398 that reforms the Stamp Duty Law of November 18, 2014, will be mandatory.
Holders of foreign nationality have to pay an equivalent payment in USD, at the lowest exchange rate in the market, determined by the Banco Central de Venezuela. The payments have to be done by the holder to a specific account created by SAPI. An official notice by the VPTO was published on May 22, 2015, confirming that the currency exchange rate of VEF 6,30 X USD 1,00 will be applicable, for the time being.
The new fees and the aforementioned payment method for companies or natural person of foreign nationality is effective since May 28, 2015 and will concern the following procedures:
-Payments of registration fees (granting) of trademarks and patents
-Registration of assignments and mergers that include trademarks and patents
-Registration of licenses of use that include trademarks and patents
-Registration of name and/or address changes of trademarks and patents holders
-Payment of annuities for the maintenance of patents, according to the table attached to the official notice
Source: Citemark International IP, Venezuela; B&R Latin America IP LLC, Colombia and Moeller IP Advisors, Argentina
03-18-2015 (Newsletter Issue 4/15)Autonomous IP Service in ProgressThere have been several important developments at Venezuela’s Autonomous Intellectual Property Service (SAPI) in the last six months. Most recently, on January 29, 2015, Cristina Piña Sierralta was appointed as the new Director of SAPI’s Industrial Property Registry.
On October 15, 2014, users, interested parties and the general public were notified via an Official Notice that the pricing of products and/or services provided by SAPI had been adjusted, effective the same date.
Additionally, on August 19, 2014, SAPI established a “Taquilla Integral,” which is a central office where applicants can initiate proceedings at the Trademark Office.
In addition to the traditional way of making bank deposits, the Autonomous Intellectual Property Service has implemented new payment options, such as bank transfers and point of sale debit card payments.
Also, the online help system, WEBPI, will offer a new option which will allow users to process their application and search a phonetic and/or graphic registration history from their home or office.
These changes should help to improve efficiency for trademark applicants in Venezuela overall, particularly with respect to electronic search results. For more information, please click here
Source: INTA Bulletin, Vol. 70 No. 4, contributor: Barbarita Guzmán, Markven Propiedad Intelectual S.C., Caracas and verifier: Ricardo Alberto Antequera, Estudio Antequera Parilli, Caracas
05-16-2014 (Newsletter Issue 8/14)Change of PracticeThe Venezuelan Patent and Trademark Office (VPTO) has published in the Bulletin No. 546 dated 9 April 2014 three Official Notices of relevant content:
1) Oppositions to TM Applications
The VPTO established that oppositions against the registration of a trademark application may be filed on the basis of (i) the grounds for non-registrability provided in articles 33, 34 and 35 of the current local IP legislation, (ii) on the grounds for absolute non-registrability referred to public policy, or (iii) on the grounds that third parties rights are affected based on prior applications and registrations.
2) Spanish sworn translation of documents
Trademark applicants are reminded that all documentation issued by a personal or legal foreign entity, public or private, must be translated into Spanish by a Venezuelan sworn translator. Simple and non-certified translations of Power of Attorney, Assignment or priority documents will not be accepted.
3) Change of owner regarding pending applications
As of 9 April 2014, it is again possible (as it was under the former Andean Legislation) to file a change of owner (applicant) for a pending Patent and Trademark application. In case of an assignment, it will be specifically required that the assignor assigns the priority filing rights of the pending applications involved in the transfer.
Source: Citemark International IP, Venezuela
10-11-2013 (Newsletter Issue 15/13)
Official Fees Increased
On September 11, 2013, the Venezuelan Patent and Trademark Office informed the general public about the enforceability of a new tax rate based on the Special Act for the Fiscal Stamp in the Capital District, published on May 2nd, 2012.
This new rate of 10 tax units is equivalent to Venezuelan Bolivars (BsF) 1,112.80; or US$ 177.19, as per the Official Currency Exchange rate.
Accordingly, the Venezuelan Patent and Trademark Office will apply this new rate for:
1) The filing of new trademarks, trade names and slogans, and;
2) The filing of new applications for patents of invention, utility models, industrial designs and improvements thereof.
Source: Hoet Pelaez Castillo & Duque, Venezuela
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 1956 Industrial Property Law. As of such date, the Industrial Property Law has been reactivated entirely.
Applications must be filed according to the national classification along with the equivalient international class according to the eigth edition.
Registrable as a trademark are all types of "distinctive signs" that identify goods and services ("marks").
The trademark registration process pursuant to the 1956 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 duly legalized by Apostille;
Furhter, all documentation issued by a personal or legal foreign entity, public or private, must be translated into Spanish by a Venezuelan sworn translator. Simple and non-certified translations of Power of Attorney, Assignment or priority documents will not be accepted.
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 opposition 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.
Protection begins with the date of registration. Before 12 September 2008 the trademark duration is valid for 10 years from the date of registration. After 12 September 2008 a trademark registration is valid for 15 years from the date of registration. The registration is renewable for periods of 15 years.
The Law does not set forth a grace period for trademark renewals.
Further practical details are available in our publication on this topic here
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.
Further practical details are available in our publication on this topic here
The official fee for filing a trademark application is VEF 1,112.80 (approx. USD 177.19).
(Source for exchange-rates: bankenverband.de
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Practical details on licensing procedures, requirements and effectiveness are available in our publication on this topic here
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The Prices above are SMD Group Search Fees
Estudio Antequera Parilli & Rodríguez, Caracas, Venezuela
Baker & McKenzie, Caracas, Venezuela
Moeller IP Advisors, Buenos Aires, Argentina