May 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 and further amended by Act 124-2011. 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.
Puerto Rico is a territory of the United States. It is unique in the sense that it is neither a state nor an independent country.
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 and is very similar to 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.
Nice classification, 10th edition
A trademark is any sign or medium that serves to distinguish in the market the goods and services of a person, as well as the goods or services of another person. The term includes any trademark or service mark, certification mark and collective mark and may be any word, name, symbol, trade dress, medium, logo, design, color, sound, scent, shape, object or any combination thereof that is used by a natural or legal person in the commerce or that a natural or legal persons intends to use which serves to identify and distinguish his/her goods or services or common characteristics of his/her goods or services under the mark from those manufactured or sold by others and to indicate the source of said goods even if that source is unknown.
The application is filed at the Puerto Rico Trademark Office, which is a division within the Department of State.
A single application cannot cover multiple classes. Each class of the same trademark would be considered a separate and independent application, resulting in a separate and independent registration.
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. Please bear in mind that only attorneys admitted to practice in Puerto Rico can file applications.
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. A power of attorney may only be required during prosecution if a response to an official request must be filed.
All applications based on the use of the mark in Commerce and all Declarations of Use must include a specimen.
There is no priority based on a foreign registration/application available in Puerto Rico.
The application process includes a formal examination, an examination of distinctiveness, descriptiveness, deceptiveness, and a search for prior trademarks registered in Puerto Rico.
The processing time from first filing to registration or first office action is approx. 2 years if no office actions are issued.
National:The opposition period is 30 days from the 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.
Details regarding the
Opposition Period against designation of IR Mark are available in our publication on this topic
here
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.
Practical details on grace periods for trademark renewals are available in our publication
herePractical details on trademark use requirements are available in our publication
hereThe official fee for filing a trademark application is USD 150 per class and filing basis (use/intent-to-use or both). The filing fee will increase depending on the applicant’s basis selected. Additional fees associated with mark applications include publication costs of USD 75 and a registration fee of USD 150 per mark.
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Puerto Rico Trademark Office now offers online services and information:
The Puerto Rico Trademark Office (PRTO) offers online services for all trademark transactions and filings. The PRTO offers an online search trademark database for all marks filed and registered with the Department of State. Logged in users are able to submit trademark applications, validation minimum requirements for an application prior to payment, select and search for Nice Classification of goods and services, upload mark images and specimens, and make credit card payments all online.
Certificates of Registration will only be issued digitally.
Practical details on trademark licensing are available in our publication
hereOnline you can see a limited part of information about this country.
More in-depth details are available for the following aspects:
General Trademark Regulations
Trademark Use Requirements
Grace Period for Trademark Renewal
Trademark Licensing
If you like to purchase all available information for this country, click the order button.
The total price is
49.00 EUR. A PDF-Download will be sent to you electronically.
Nov 07, 2023
Ladas & Parry LLP, New York, USA
