TRADEMARKS FILING AND PROSECUTION IN PARAGUAY
A trademark is a distinctive sign or indicator used by an individual, business organization, or other legal entity to help consumers indentify that its products or services with which the trademark appears originate from a unique source, and to help distinguish its products or services from those of other entities.
Trademark in Paraguay may be designated by the following symbols:
- ® (for a registered trademark)
- ™ (for an unregistered trademark)
A trademark is typically a name, word, phrase, logo, symbol, design, image, or a combination of these elements. There is also a range of non-conventional trademarks comprising marks which do not fall into these standards categories, such as those based on colour, smell, or sound.
A trademark provides protection to the owner of the mark by ensuring the exclusive right to use it to identify goods or services, or to authorize another to use it in return for payment. Trademark protection also hinders the efforts of unfair competitors, such as counterfeiters, to use similar distinctive signs to market inferior or different products or services.
The owner of the registered trademark may initiate legal proceedings for trademark infringement to prevent unauthorized use of that trademark.
|Relevant office||National Directorate of Intellectual Property (DINAPI)|
|Nice classification||Yes (11th edition)|
|Multi class system||No|
|Documents required for filing a trade mark application||Notarised Power of Attorney|
|Prosecution process||Filing publication of the mark in the trade mark journal opposition(within 60 working days computed from the first working day following the latest publication) registration renewal|
|Registration term||10 years from the date of registration|
|Renewal term||10 years|
Trademark searches in Paraguay
It is advisable to conduct a trademark search prior to filing a trademark application to ascertain the availability of trademarks, existence of prior identical/similar marks on the register etc., so as to avoid any objection and opposition with respect to the mark.
A trademark search in Paraguay can be conducted for word marks, device marks, numeral and labels. An official search can be conducted at the records of the National Directorate of Intellectual Property (DINAPI).
Trademark word search edition of Paraguay follows the Nice Classification and trademark applications can be filed for goods in classes 1-34 and services in classes 35-45.
It is advisable to conduct comprehensive trademark clearance search in Paraguay to ascertain availability of the proposed mark and also to overcome any objection and opposition with respect to mark later on.
Along with trademark search, it is also advisable to do a comprehensive company search and domain search of the proposed trademark in Paraguay. It is advisable to conduct a comprehensive search for a figuration trademark. The device marks include individual marks such as stylized letters, numerals, shapes, plants, celestial bodies, living creatures etc. or combination of marks containing device marks. A device mark search in Paraguay can be conducted amongst the marks filed and registered as per the Vienna code classification.
Filing trademark applications in Paraguay
A person may file single class trademark application in Paraguay.
A person may file a multi class or single class trademark applications in South Korea.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Paraguay:
Ordinary trademark applications filed in Paraguay are applications without claiming any priority. Ordinary applications can be filed online through the official website of National Directorate of Intellectual Property (DINAPI). The official website of the registry provides with an electronic forms system by accessing https://sfe.dinapi.gov.py/ in which you can find user guide through which users can complete their trademark applications, they can sign digitally, pay and send them to the digital entry desk without printing anything. Multi class trademark applications cannot be filed in Paraguay. However, the trademarks act also lays down provisions regarding the filing of priority applications, wherein priority of the mark can be claimed in the said mark filed in a convention country.
Priority trademark applications in Paraguay/Convention trademark application in Paraguay:
A priority trademark application may be filed in Paraguay. A priority trademark application should be filed in Paraguay within 6 months after the date on which the application was made in the convention country.
The Paris Convention for the Protection of Industrial Property, signed in Paris, France, on March 20, 1883, established a Union for the protection of industrial property. It offers national treatment to the applicant residing in the member country of the union, in other words. National treatment is a very important concept and is essential for successfully achieving the fundamental aim of the Paris Convention. The idea is to provide equal treatment to applications from member countries, in a given member country and not to differentiate between the nationals of member countries for the purpose of grant, and protection of industrial property. Priority application can be filed in Paraguay within six months of after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Paraguay follows the nice classification of classes. National Directorate of Intellectual Property (DINAPI) uses the nice classification of classes that groups together similar goods or services into 45 different classes. Classes 1 to 34 are assigned for the goods and classes 35 to 45 are assigned for the services. Each class contains well defines list of terms and cover all the goods and services.
Trademark examination in Paraguay
Once the application for the registration is submitted it goes through the examination stage. The placation process includes a formal examination, an examination on grounds of distinctiveness and search for prior trademarks.
Trademark opposition in Paraguay
Opposition to the registration of trademark can be filed in writing with the Industrial property directorate within 60 working days computed from the first working day following the latest publication.
Opposition submitted will be served in an official document to the applicant and the applicant can file a response within 18 working days. If facts need to be ascertained, the parties will need to provide evidence within 40 working days from the date of notification in an official document. After expiry of the period of filing response and providing evidence, without further procedure the case shall be resolved.
The heads of the relevant sections will first resolve all the non-contentious matters. The heads of the sections for contentious matters will resolved within the competence of the industrial property directorate and all the decisions of the heads of the relevant sections will be proved.
In case head of the relevant section shall not take decision within 40 working days, any interested party may lodge a appeal to the head’s superior.
Appeals may also be lodged against decision of the heads of sections within five working days. If the appeal is allowed, the complainant shall express his grievances to the director of the industrial property directorate.
Trademark registration in Paraguay
The application shall proceed to registration where there is no opposition or where the opposition was filed and was decided in favor of the applicant. The mark is registered for a period of 10 years from date of registration and the registration certificate is issued.