TRADEMARKS FILING AND PROSECUTION IN VENEZUELA
A trademark is a sign that is registered to distinguish a product or service in commerce. There are other types of signs used in trade that can also be registered with the Venezuela IP Office, such as logos, designations of origin, geographical indications, collective marks and certification or guarantee marks.
In order to legally protect a trademark or other sign used in commerce, it is necessary to register it with the Venezuela IP Office. In Venezuela, trademark protection is granted according to the provisions of Industrial Property Law, Venezuela (Bolivarian Republic of)
Trademark in Venezuela 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, and can license it to the third parties, sell it in return of sum, use it raise equity for business undertakings.
| Relevant office | Autonomous Service of Intellectual Property (SAPI) |
| Filing principle | First to file |
| Nice classification | YES |
| Paris convention | YES |
| Madrid system | NO |
| Multi class system | NO |
| Documents required for filing a trade mark application | Name and address of the applicant, clear representation of the trademark, list of goods and/or services and Apostilled/Legalized Power of Attorney. |
| Prosecution process | Filing, examination, publication, registration, renewal |
| Registration term | 15 years from the date of registration. |
| Renewal term | 15 years |
Trademark searches in Venezuela
Under the “First to File” principle, if any other applicants file applications for the identical or similar trademark used for identical or similar goods and services after the first applicant has applied, those later applications will be refused.
Therefore, 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 Venezuela can be conducted for word mark, numbers, images, etc. It is advisable to conduct comprehensive trademark clearance search in Venezuela 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 Venezuela.
Filing trademark applications in Venezuela
A person may file single class trademark application in Venezuela.
Trademark application can be filed in the following categories:
- Ordinary Applications
- Convention application (claiming priority from a convention country)
Ordinary application in Venezuela
Ordinary trademark applications filed in Venezuela are applications without claiming any priority. 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 Venezuela /Convention trademark applications Venezuela:
A priority trademark application may be filed in Venezuela. A priority trademark application should be filed in Venezuela within 6 months after the date on which the application was made in the convention country.
Paris convention
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 Venezuela within six months after the date on which the application was made in the Convention Countries.
Trademark classes for goods and services
Venezuela follows the nice classification of classes. Intellectual property office of Venezuela 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 defined list of terms and cover all the goods and services.
Trademark Examination in Venezuela
Once the application for the registration is submitted it goes through the examination process which consists of examination on the basis of Absolute and relative grounds of refusal.
Article 33.- The following may not be adopted or registered as trademarks:
- words, phrases, figures or signs that suggest immoral ideas or serve to distinguish immoral objects or goods of prohibited production or trade and those used in illicit business or on a harmful article;
- the Flag, Coat of Arms or other insignia of the Republic, of the States or Municipalities and, in general, any Venezuelan public entity;
- the signs, emblems and insignia of the Red Cross and any other entity of the same nature;
- the Flag, Coat of Arms or other insignia of foreign nations, except when their commercial use is duly authorized by certificate issued by the corresponding office of the nation interested;
- geographical names, as an indication of the place of public or social utility, decree the expropriation of the place of origin;
- the shape and color given to the articles or products by the manufacturer, nor the colors or combination of colors alone;
- geometric figures that are not new;
- caricatures, portraits, drawings or expressions that tend to ridicule ideas, people or objects worthy of respect and consideration;
- the terms and phrases that have passed into general use, and the expressions commonly used to indicate the gender, species, nature, origin, quality or form of products;
- the full name or surname of a natural person, if not it is presented in a peculiar and distinct form, sufficient to differentiate it from the same name when used by other people, and even in this case, if it is the name of a third party, if it is not presented with the consent of the latter.
- a trademark that is graphically or phonetically similar to another trademark already registered, for the same or similar articles; and,
- that which may be confused with another trademark already registered or which may mislead by indicating a false origin or quality.
Article 34.- The following may not be registered:
- Trade names that are merely descriptive of the company to be distinguished, unless, in addition to this descriptive part, they contain some characteristic that serves to individualize them. In this case, the registration will only protect the characteristic part; and
- commercial slogans that contain allusions to similar products or brands, or expressions that may be detrimental to those products or brands.
Trademark Opposition in Venezuela
Any interested person, within 30 days from the date of publication of the mark in the Official Bulletin, has the right to file to the Controller an opposition to the registration of the mark.
Trademark registration in Venezuela
After the examination, opposition process is completed and the mark is accepted for registration, the mark will be registered for a period of 15 years from date of registration, and the registration certificate is issued.
Trademark Renewal in Venezuela
You can renew your trademark right by filing a request for renewal six (6) months before the trademark right expires.