Trademark procedures and strategies: Venezuela

Legal framework

The legal framework in Venezuela relies primarily on the Industrial Property Law 1956. Since the withdrawal of Venezuela from the Andean Community in April 2006 and the official announcement of the Venezuelan Patent and Trademark Office (SAPI) that the relevant trademark and patent legislation would be the Industrial Property Law, there has been ambiguity regarding the applicable legislation, as the Supreme Court of Justice has recognised the application of Andean Community legislation in cases in which this legal body was in force pursuant to the 1999 Constitution, which expressly incorporates international treaties into Venezuela’s legal system.

Venezuela is also a signatory to several international treaties that are directly or indirectly related to intellectual property, including the Paris Convention for the Protection of Industrial Property and the Agreement on Trade-Related Aspects of Intellectual Property Rights.

Unregistered marks

In Venezuela, exclusive trademark rights are granted only by registration according to the Industrial Property Law. However, the owners of unregistered trademarks may be able to prevent the registration of marks by filing an opposition to the application based on their unregistered trademarks. In addition, SAPI may deny an application based on the existence of a prior similar application.

Use is not required either to file or grant a trademark; like most civil law-based trademark systems, Venezuela is a first-to-file jurisdiction. However, according to the Industrial Property Law, use may be required in two cases:

• when a non-use cancellation action is filed; and
• in case of opposition based on a ‘better’ right – this procedure, set out in the Industrial Property Law, allows for the filing of an opposition based on notoriety or prior use.

Registered marks

Ownership

There are no restrictions as to who may file a trademark application. National and foreign individuals, including legal entities, may file trademark applications. In addition, an application may be filed by joint applicants. For filing purposes, the following information must be included for each applicant:

• name and address;
• nationality and, if the applicant is a legal entity, place of incorporation; and
• name and address of the applicant’s legal representative, if it has one (required when the applicant is a foreign individual or corporation).

To act as a legal representative, a power of attorney is required, duly signed by the applicant and notarised and certified by apostille or legalised by a Venezuelan consulate, as the case may be.

Scope of protection

Inherently distinctive words and signs (and combinations thereof) that are capable of being graphically reproduced can be registered as trademarks. Trade names and commercial slogans may also be registered.

Not protected

Trademark applications are most commonly rejected where the mark for which registration is sought:

• is descriptive, generic or both;
• is similar to a prior trademark application or registration;
• is deceptive (ie, with respect to its place of origin);
• comprises only a colour, as colours cannot be registered as a trademark;
• is contrary to morals and public order; or
• is a trade name, where the applicant is an individual and not a company.

Procedures

Examination

A trademark application is first examined to corroborate that it complies with the essential requirements for obtaining a filing date. If it does, the application is given a number and filing date, and will be examined for compliance with the other formal requirements.

If one or more formal requirements are not complied with, the applicant will be notified in the Industrial Property Bulletin and must remedy the non-compliance within 30 working days of notification; otherwise, the application will be considered abandoned. This term may be extended for three months on the applicant’s request and if the examiner considers it necessary.

Once the applicant duly complies with the formalities, SAPI will perform a registrability analysis of the mark in order to determine that it is inherently distinctive and not similar to a prior trademark application or registration.

If an application is denied either ex parte or ex officio, the applicant can file two administrative appeals: a reconsideration petition before SAPI and a second appeal before the minister of light industry and trade. Thereafter, a final appeal may be filed before the Supreme Court of Justice within six months of the minister’s decision.

Publication

The registrar will subsequently order publication of the trademark application at the expense of the interested party in a daily newspaper. Thereafter, the application is published by SAPI in the Industrial Property Bulletin for opposition purposes.

Opposition

After publication of the trademark in the Industrial Property Bulletin, any person can oppose the registration of the mark based on any of the grounds for rejection set out in the law or based on a better right within 30 working days of publication.

The applicant will be informed of the opposition through a notification published in the Industrial Property Bulletin and also has 30 working days from publication to reply to the opposition. If no reply to the opposition is filed, the application will be deemed to be abandoned. The examiner will then publish its decision in the Official Bulletin. There is then a 15-day period for parties to file a reconsideration petition against the unfavourable decision; thus, if such petition is not filed in a timely manner, the decision will be final.

Registration

If an application has passed the formal and substantive examination, and no opposition has been filed, a notice of grant will be published in the Official Bulletin. A trademark right is established on registration of such right and payment of the registration fee. The registration is valid for 15 years from the granting date, with the possibility of unlimited renewals. No certificates of renewal, merger or change of name are issued.

Removal from register

Cancellation actions: Any interested party can file a cancellation action for non-use against a registered trademark, once two years have passed from the registration date. If use by a licensee is to be submitted, such licence must be duly recorded at SAPI in order for use to inure in favour of the licensor and trademark owner. The party initiating the cancellation action bears the burden to prove that the mark has not been used in Venezuela for the past two consecutive years.

Nullity: It is possible to annul a registered trademark if the administrative acts of assessing and granting the application were performed against the law.

Timeframe

From the filing date, the time taken to register a trademark is around 12 months for an unopposed mark and at least four years when opposition procedures are involved.

Searches

Trademark searches are compulsory in order to file new applications. Searches can be carried out as to ownership, trademark per class or designs.

Enforcement

Civil remedies

The enforcement of trademark rights can be sought through both criminal and civil jurisdictions. Border enforcement mechanisms are also available. The most common way to proceed is through the civil jurisdiction, as it entails less liability for the plaintiff. In order to succeed in civil proceedings, it is better if a valid trademark registration exists.

In Venezuela, there are no specialised courts for trademark infringement. Nevertheless, IP infringement cases are tried by the first-instance courts for civil and mercantile matters, which have jurisdiction to decide such matters. These courts may issue a wide range of injunctions to safeguard legal rights, provided that irreparable harm can be proved.

A trademark infringement action cannot be filed before the administrative jurisdiction, as SAPI must limit its activities to prosecution tasks including filing, prosecution, oppositions, renewals, cancellations and nullity trademark actions, among others, but not including infringement claims.

Precautionary measures may also be requested, which allow the plaintiff to stop the infringement immediately, preventing the defendant from using the trademark until a final decision has been issued.

In order for the court to dictate precautionary measures, the plaintiff must demonstrate that there is a real risk and that the final decision may not be enforced. This situation must be adequately proved. The plaintiff must prove its claim and the fact that continuance of the infringement could cause serious damage. If the judge considers that the situation is adequately proved, he or she can order such preventive measures accordingly.

The merits of the claim are not directly linked to the measures ordered by the court. If the judge decides not to order measures, this does not mean that the plaintiff cannot obtain a favourable final decision. Nonetheless, for the duration of the process, the other party can continue to use the contested IP right.

Unfair competition

Unfair competition acts in IP matters are those performed in the business field that are contrary to honest practices – that is, those in conflict with cultural norms and therefore prohibited by commercial practice. Such acts constitute dishonest and reprehensible behaviour against any business person.

In addition, case law divides unfair competition acts into three categories:

• misleading acts;
• denigrating acts; and
• disorganisation acts.

Misleading acts are designed to profit from consumer confusion by imitating the name of the product of a competitor with a stronger reputation.

Venezuelan legislation has not developed the concept of unfair competition; rather, this has been developed by case law. In this sense, for a misleading act to be considered illegal, the following characteristics must be present:

• It must be an act of competition. This means that the principal aim of the infringer’s act must be to compete directly with the product commercialised by the target company;
• It must be an unfair act which abuses rights and uses means that are contrary to moral and commercial norms as a competition method;
• It must cause damage to the target mark owner; and
• It must confuse consumers when choosing a product.

Criminal action

Trademark enforcement is regulated by the Criminal Act and the Criminal Procedure Act. The procedure must be initiated by the owner of the infringed trademark. The investigation is conducted by the District Attorney’s Office and the competent police department. If the infringer cannot submit evidence of authorisation from the mark owner to use the mark (eg, an assignment of rights, a subsidiary licence or a distribution or sales agreement), the office may seize the infringing products.

The public prosecutor will initiate an investigation in order to obtain enough evidence to prosecute the alleged infringer before the criminal courts.

Before prosecution, the parties may execute compensatory agreements in which the infringer acknowledges that it has committed an infringement and promises to desist from such illicit activity.

Procedure before SENIAT

The National Integrated Customs and Tax Administration (SENIAT) has a division responsible for the enforcement of IP rights during the import and transit of goods through Venezuelan Customs.

SENIAT Administrative Decision SNAT/2005/0915 stipulates that SENIAT is empowered to conduct raids on a nationwide basis in order to preventively seize imported products that may infringe IP rights. According to the administrative decision, such action can also be taken if illegal use of a trademark is committed through imported products.

SENIAT will intervene when imported goods that may violate or infringe IP rights are found:

• in the immediate control area;
• in free trade zones or bonded warehouses; or
• in areas where control has already been carried out.

The procedure begins with a request for immediate inspection and preventive retention of the infringing goods presented to SENIAT by the mark owner, accompanied by valid reasons to suspect that goods infringing IP rights may be imported or may transit through the national territory.

Once such a request has been received, SENIAT officers will go to the place where the infringing goods are located and request the infringer to present its authorisation from the mark owner to use the mark. If the infringer fails to provide such authorisation, SENIAT may seize the infringing goods. SENIAT should notify the infringer and the rights holder immediately of the seizure of such goods. Following notification, the parties have 10 business days to bring any appropriate legal action.

Timeframe

At trial level, infringement proceedings take at least 18 to 24 months, as several preliminary appeals may be filed during trial and before the final decision is issued. Once a decision is rendered at trial level, an appeal can be filed before a second-instance court, which may remand the case if it finds that the trial court did not apply the law properly. A decision at second instance may also take between 18 and 24 months to issue. Finally, the second-instance decision can be appealed before the Supreme Tribunal of Justice, which may also remand the case if it finds that there has been a flaw in the application of the law.

Ownership changes and rights transfers

Assignment

Assignments must be recorded in order to have validity against third parties, which is critical in cases where actions such as cancellations and nullity actions are taken against a registered trademark. If the assignment is not recorded, it will be valid only inter partes and its effects will not extend to third parties.

In order to record an assignment, there must be a written document executed by the parties. If a party executed the document abroad (outside Venezuela), such signature must be notarised and legalised by either apostille or a Venezuelan consulate. If the document is drafted in any language other than Spanish, it must be translated by a sworn public translator in Venezuela.

Licence

Licence agreements should be executed and legalised, as in the case of assignments. In addition, should a Venezuelan company be involved, the licence agreement must first be recorded with the Superintendence of Foreign Investment before its recordal with the Trademark Office.

Although it is not compulsory to record assignments, changes of name and licences, it is advisable to record them as otherwise they have no legal effect against third parties.

Related rights

There are many areas where IP rights overlap. For this reason, trademark owners should seek dual protection for their IP rights where possible.

A design or logo may be protected:

• as a trademark;
• as a copyrighted work, if it is an original and creative expression of the intellect; or
• as an industrial design.

Obtaining dual protection in Venezuela is not only useful, but also offers the mark owner a wide range of legal actions through which to defend its IP rights.

Online issues

The domain name registration process in Venezuela is managed and regulated by the Network Information Centre of Venezuela and is subject to the Uniform Domain Name Dispute Resolution Policy of the Internet Corporation for Assigned Names and Numbers (ICANN). Although the ICANN dispute resolution measures are available, the Venezuelan national registry sets down its own requirements.

Venezuela is a first-to-file jurisdiction and registration grants exclusive legal use of the relevant trademark within the country. Therefore, third parties cannot use the same or a similar mark without the authorisation of the mark owner. This prohibition includes activities such as the manufacture, import, export and sale of products identified with the mark or of products that may cause confusion among consumers.

Although there are no specific provisions in domestic law to protect mark owners against unauthorised use of trademarks in domain names, websites, hyperlinks, online advertising or metatags, general provisions and local remedies are available aside from those under ICANN. Therefore, infringement actions may be brought where a mark is used online as a domain name or as a trademark.

Hoet Pelaez Castillo & Duque

Av Eugenio Mendoza, Edif IASA, Piso 3

La Castellana

Caracas 1060

Venezuela

Tel +58 212 201 8611

Fax +58 212 263 7744

Web www.hpcd.com

Joaquín Núñez-Landáes

Partner

[email protected]

Joaquín Núñez-Landáes joined Hoet Pelaez Castillo & Duque in 2012 and became partner in 2016. He previously worked as international trademark counsel at Dineff Trademark Law in Chicago, United States, where he gained a valuable international perspective. He started his professional career in 2004 and has worked in other well-known IP firms in Venezuela.

His practice covers general counselling on trademark and patent rights, negotiation of agreements, registration strategies and risks related to trademark use.